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 6:20-cv-00454-ADA

CIVIL ACTION 6:20-cv-00461-ADA

CIVIL ACTION 6:20-cv-00465-ADA

PLAINTIFFS’ OPENING CLAIM CONSTRUCTION BRIEF 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 1 of 38
i

Table of Contents

I. Legal Standards....................................................................................................................... 1

A. Claim Construction Generally ......................................................................................... 1

B. Indefiniteness................................................................................................................... 2

II. Terms of U.S. Patent No. 7,106,702 (Case No. 6:20-cv-00461-ADA)................................... 2

A. Disputed terms of the ’702 patent which only Microsoft seeks to construe.................... 2

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

2. “the AAA functions”.........................................................................................................4

3. “active nodes” ...................................................................................................................4

4. “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”............................................................................................................................7

5. “each of said nodes having a user database”.....................................................................8

6. “activating the AAA functions of the active nodes” .........................................................9

B. Terms of the ’702 patent which Microsoft seeks to challenge as indefinite.................. 10

7. “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”................10

8. “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”.............................................12

III. Terms of U.S. Patent No. 7,366,160 (Case No. 6:20-cv-00454-ADA)................................. 15

A. Disputed terms of the ’160 patent which only Microsoft seeks to construe.................. 15

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 2 of 38
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” .............................15

2. “network parameter” .......................................................................................................16

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” .....................................................................................................18

4. “service indicator”...........................................................................................................19

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

indicator crossing a defined threshold”...........................................................................21

B. Terms of the ’160 patent which Microsoft seeks to challenge as indefinite.................. 22

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

service parameter values” ...............................................................................................22

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

network service trend determined” .................................................................................24

8. “determining a capacity to provide a network service at a given time”..........................26

IV. Terms of U.S. Patent No. 8,274,902 (Case No. 6:20-cv-00465-ADA)................................. 28

A. Disputed terms of the ’902 patent which only Microsoft seeks to construe.................. 28

1. “network that branches, downstream of the collection point” ........................................28

2. “estimating a packet loss rate” and “an estimate of a packet loss rate” ..........................29

3. “packet loss rate”.............................................................................................................30

B. Sole phrase of the ’902 patent which Microsoft seeks to challenge as indefinite ......... 30

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” .............................................................................................................30

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 3 of 38
iii

TABLE OF AUTHORITIES

Cases

Augme Techs., Inc. v. Yahoo! Inc.,

755 F.3d 1326 (Fed. Cir. 2014)............................................................................... 11, 13, 15, 31

Azure Networks, LLC v. CSR PLC,

771 F.3d 1336 (Fed. Cir. 2014)................................................................................................... 1

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

715 F.3d 891 (Fed. Cir. 2013)....................................................................................... 13, 25, 27

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

224 F.3d 1308 (Fed. Cir. 2000)................................................................................................. 19

CloudofChange, LLC v. NCR Corp.,

No. 6-19-CV-00513-ADA, 2020 WL 4004810 (W.D. Tex. July 15, 2020)........................... 1, 2

Comark Commc’ns, Inc. v. Harris Corp.,

156 F.3d 1182 (Fed. Cir. 1998)................................................................................................... 1

Cont’l Circuits LLC v. Intel Corp.,

915 F.3d 788 (Fed. Cir.)................................................................................................ 15, 20, 21

Dayco Prods., Inc. v. Total Containment, Inc.,

258 F.3d 1317 (Fed. Cir. 2001)................................................................................. 9, 15, 20, 21

Eko Brands, LLC v. Adrian Rivera Maynez Enterprises, Inc.,

946 F.3d 1367 (Fed. Cir. 2020)................................................................................................. 20

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

No. A-13-CA-587-SS, 2015 WL 1275910 (W.D. Tex. Mar. 19, 2015) ..................... 4, 6, 17, 29

In re Borkowski,

422 F.2d 904 (C.C.P.A. 1970)................................................................................................... 25

Intel Corp. v. U.S. Int’l Trade Comm’n,

946 F.2d 821 (Fed. Cir. 1991)..................................................................................................... 3

Jack Guttman, Inc. v. Kopykake Enterprises, Inc.,

302 F.3d 1352 (Fed. Cir. 2002)................................................................................................... 4

K-2 Corp. v. Salomon S.A.,

191 F.3d 1356 (Fed. Cir. 1999)............................................................................................. 9, 18

Miles Laboratories, Inc. v. Shandon Inc.,

997 F.2d 870, (Fed. Cir. 1993)...................................................................................... 12, 13, 31

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 4 of 38
iv

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

572 U.S. 898 (2014).......................................................................................................... 2, 9, 24

North American Vaccine, Inc. v. American Cyanamid Co.,

7 F.3d 1571 (Fed. Cir. 1993)................................................................................... 11, 13, 15, 31

Phillips v. AWH Corp.,

415 F.3d 1303 (Fed. Cir. 2005)........................................................................................... 1, 6, 7

Power Mosfet Techs., L.L.C. v. Siemens AG,

378 F.3d 1396 (Fed. Cir. 2004)................................................................................................. 17

Process Control Corp. v. HydReclaim Corp.,

190 F.3d 1350 (Fed. Cir. 1999)................................................................................................. 25

Purdue Pharma L.P. v. Endo Pharmaceuticals Inc.,

438 F.3d 1123 (Fed. Cir. 2006)................................................................................................. 22

Resonate Inc. v. Alteon Websystems, Inc.,

338 F.3d 1360 (Fed. Cir. 2003)................................................................................................. 18

Sinorgchem Co., Shandong v. Int’l Trade Comm’n,

511 F.3d 1132 (Fed. Cir. 2007)................................................................................................. 29

SIPCO, LLC V. Abb, Inc.,

2012 Markman 3112302, 2012 WL 3112302 (E.D. Tex. 2012)................................................. 3

Sonix Tech. Co. v. Publ’ns Int’l, Ltd.,

844 F.3d 1370 (Fed. Cir. 2017)................................................................................................... 2

Tech. Properties Ltd. LLC v. Huawei Techs. Co.,

849 F.3d 1349 (Fed. Cir. 2017)................................................................................................. 21

Tex. Instruments, Inc. v. U.S. Int’l Trade Comm’n,

988 F.2d 1165, 1171 (Fed. Cir. 1993)....................................................................................... 18

TQ Delta, LLC v. 2Wire, Inc.,

2019 WL 1553805 (D. Del. 2019) .......................................................................... 11, 13, 15, 31

Unwired Planet, LLC v. Apple Inc.,

829 F.3d 1353 (Fed. Cir. 2016)................................................................................................. 27

Statutes

35 U.S.C. § 112............................................................................................................................... 2

35 U.S.C.A. § 112......................................................................................................................... 11

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 5 of 38
1

Plaintiff WSOU Investments, LLC d/b/a Brazos License and Development (“WSOU”)

submits the following opening claim construction brief pursuant to the Order Governing 

Proceedings (“OGP”) and the Scheduling Order entered in this case. 

I. Legal Standards

A. Claim Construction Generally

The general rule is that claim terms are generally given their plain-and-ordinary meaning. 

Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc); Azure Networks, LLC v.

CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014), vacated on other grounds by 135 S. Ct. 1846, 

1846 (2015) (“There is a heavy presumption that claim terms carry their accustomed meaning in 

the relevant community at the relevant time.”). The plain and ordinary meaning of a term is the 

“meaning that the term would have to a person of ordinary skill in the art in question at the time 

of the invention.” Philips,415 F.3d at 1313. “‘Although the specification may aid the court in 

interpreting the meaning of disputed claim language, particular embodiments and examples 

appearing in the specification will not generally be read into the claims.’” Comark Commc’ns, Inc. 

v. Harris Corp., 156 F.3d 1182, 1187 (Fed. Cir. 1998) (quoting Constant v. Advanced MicroDevices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988)). Although extrinsic evidence can also be 

useful, it is ‘“less significant than the intrinsic record in determining the legally operative meaning 

of claim language.’” Phillips, 415 F.3d at 1317 (quoting C.R. Bard, Inc. v. U.S. Surgical Corp., 

388 F.3d 858, 862 (Fed. Cir. 2004)). 

This Court recently explained that “[t]he ‘only two exceptions to [the] general rule’ that 

claim terms are construed according to their plain and ordinary meaning are when the patentee 

(1) acts as his/her own lexicographer or (2) disavows the full scope of the claim term either in the 

specification or during prosecution.” CloudofChange, LLC v. NCR Corp., No. 6-19-CV-00513-

ADA, 2020 WL 4004810, at *2 (W.D. Tex. July 15, 2020) (quoting Thorner v. Sony Computer 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 6 of 38
2

Entm't Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). “To act as his/her own lexicographer, the 

patentee must ‘clearly set forth a definition of the disputed claim term,’ and ‘clearly express an 

intent to define the term.’” Id. (quoting Thorner, 669 F.3d at 1365). And “[t]o disavow the full 

scope of a claim term, the patentee’s statements in the specification or prosecution history must 

represent ‘a clear disavowal of claim scope.’” Id. (quoting Thorner, 669 F.3d at at 1366). 

“Accordingly, when ‘an applicant’s statements are amenable to multiple reasonable 

interpretations, they cannot be deemed clear and unmistakable.’” Id. (quoting 3MInnovative 

Props. Co. v. Tredegar Corp., 725 F.3d 1315, 1326 (Fed. Cir. 2013)).

B. Indefiniteness

The Patent Act requires claims to particularly point out and distinctly claim the subject 

matter regarded as the inventions. 35 U.S.C. § 112, ¶ 2. To satisfy this requirement, the claim must 

be read in light of the intrinsic evidence to determine whether it informs one of skill in the art at 

the time of the invention “about the scope of the invention with reasonable certainty.” Nautilus, 

Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910-11 (2014). To establish that a claim is indefinite, 

a patent challenger must prove indefiniteness by clear and convincing evidence. Sonix Tech. Co. 

v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017).

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

A. Disputed terms of the ’702 patent which only Microsoft seeks to construe

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”

Microsoft errors in seeking an omnibus construction for distinct terms recited in different 

contexts in various claims. Specifically, Microsoft seeks to construe (1) “AAA function capable” 

(recited in the preamble of claim 1), (2) “equipped to carry out authentication, authorization and 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 7 of 38
3

accounting (AAA) functions for the network” (recited in the body of claim 11), and (3) “equipped 

to conduct authentication, authorization and accounting (AAA) functions for the network” (recited 

in the preamble of claim 18) to all mean “equipped to conduct all three of authentication, 

authorization, and accounting functions.” These varying phrases reveal on their face that when 

the patentee intended an “equipped to” requirement, it said so. Furthermore, courts have 

recognized a meaningful distinction in claim language directed toward capability, as opposed to 

configuration. See, e.g., Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 832 (Fed. Cir. 

1991) (adopting a broader interpretation of claim scope because the claim language was expressly 

drawn towards the capability of the feature); SIPCO, LLC V. Abb, Inc., 2012 Markman 3112302, 

2012 WL 3112302, *7-*11 (E.D. Tex. 2012) (refusing to limit “configured to” in describing a 

communication protocol to the embodiments shown in the specification, but also refusing to 

broadly construe it to just mean has the capability and instead construing the term to mean “actually 

programmed or equipped with hardware or software to”).

In claim 1, the disputed phrase appears in the preamble as follows: “[a] method of 

maintaining authentication, authorization and accounting (AAA) functionality for a wireless 

communications network having a plurality of nodes which are AAA function capable[.]” It 

appears that Microsoft has taken the position that the preamble of claim 1 is limiting. While the 

method is directed to “maintaining authentication, authorization and accounting (AAA) 

functionality”, the preamble recites that the “plurality of nodes” themselves need only be “AAA 

function capable” (where function is recited in the singular). Even if deemed limiting, this 

preamble recitation does not expressly require that each node of the “plurality of nodes” must 

necessarily be presently “equipped to conduct all three of authentication, authorization, and 

accounting functions” (in the plural), as stated in Microsoft’s construction for this preamble phrase. 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 8 of 38
4

For the other two phrases Microsoft identified, recited as “equipped to [carry out / conduct] 

authentication, authorization and accounting (AAA) functions for the network”, no construction is 

necessary for either phrase apart from the claim language itself. Each phrase is plain on its face, 

particularly with use of the word “and” as the conjunction. 

2. “the AAA functions”

Out of an abundance of caution, WSOU submits the term “the AAA functions” for 

construction only for the Court to take judicial notice that this term (as recited in independent 

claims 1, 11 and 18) makes reference to the antecedent recitation of “authentication, authorization 

and accounting (AAA) functionality”. Microsoft does not appear to dispute that use of the article 

“the” in the term “the AAA functions” is an antecedent reference to the aforementioned 

functionality. Given this apparent agreement, it is unclear why Microsoft further seeks to add “all 

three” in its proposed construction, which is an expression not stated anywhere in the ’702 patent. 

3. “active nodes”

The term “active node” (recited in all issued claims of the ’702 patent) should be construed, 

consistent with lexicography of the specification, to mean a “node in an active state of AAA 

functionality.” This definition reflects the following lexicography set forth in the specification: 

“[h]erein, the terms ‘active’ and ‘non-active’ when used in the context of ‘active node’ and ‘nonactive node’ refers to the state of the node’s AAA functionality (i.e., its AAA server is active or 

non-active, respectively), and not to the general state of the node as a whole.” (’702 patent, 3:22-

279, emphasis added.) See Jack Guttman, Inc. v. Kopykake Enterprises, Inc., 302 F.3d 1352, 1360-

61, (Fed. Cir. 2002) (“Where, as here, the patentee has clearly defined a claim term, that definition 

usually is dispositive; it is the single best guide to the meaning of a disputed term.”); FisherRosemount Sys., Inc. v. Invensys Sys., Inc., No. A-13-CA-587-SS, 2015 WL 1275910, at *11 (W.D. 

Tex. Mar. 19, 2015) (instructing that “[c]lear definitions are usually set off by quotation marks or 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 9 of 38
5

are marked by the word ‘is.’”) (citing Sinorgchem Co., Shandong v. Int'l Trade Comm’n, 511 F.3d 

1132, 1136 (Fed. Cir. 2007)). 

Microsoft errs in refusing to recognize that the above lexicography controls here. Id. 

Rather than propose a construction that comports with the above lexicography, Microsoft seeks to 

redefine “active nodes” to mean “nodes that carry out the AAA functions for the network by 

employing their respective user databases.” The Court should reject Microsoft’s departure from 

the specification lexicography. 

Microsoft’s erroneous definition should also be rejected as potentially encompassing nodes 

that are not in an “active” state with respect to AAA functionality and thus are not properly 

considered “active nodes” in the context of the claims. The specification discloses, with reference 

to Figures 1 and 2, that “during step 20, preferably, all of the nodes are initially provisioned with 

duplicate copies of the user database employed to carry out AAA functions.” (’702 patent, 

3:29-31, emphasis added.) Under Microsoft’s erroneous definition, all nodes of this embodiment 

would qualify as “active nodes”—regardless of their present state of AAA functionality—because, 

in this example, each is at least provisioned with copies of the user database employed to carry out 

AAA functions. This result is inconsistent with the lexicography discussed above.

In addition, Microsoft’s construction risks excluding preferred embodiments at least by 

seeking to require that the claimed “active node” must itself “carry out the AAA functions.” The 

lexicographic statement above appears within the following relevant description of a preferred 

embodiment: 

While preferably all the nodes are AAA function capable, at any given 

time, only the active nodes act as AAA functional entities for the network 

10. That is to say, only the active nodes have their AAA functions and/or 

servers activated or turned on, while the non-active nodes have their AAA 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 10 of 38
6

functions and/or servers dormant or turned off. Herein, the terms “active” 

and “non-active” when used in the context of “active node” and “nonactive node” refers to the state of the node’s AAA functionality (i.e., its 

AAA server is active or non-active, respectively), and not to the general 

state of the node as a whole. That is to say, “non-active” nodes are in 

general still functional, it is just their AAA functions and/or servers that 

are non-active. 

(Id., 3:16-29, emphasis added.) Use of the alternative conjunctions “and/or” in the above 

description signals the disclosure of alternative preferred embodiments, including at least (1) a 

first preferred embodiment where a node is in an active state because its AAA functionality is 

turned on and it carries out such functionality; and (2) a second preferred embodiment where the 

node is in an active state because its AAA server is “activated or turned on,” thereby enabling the 

server to carry out AAA functionality for that node. (Id.)1

 Microsoft’s construction would risk 

excluding at least this second preferred embodiment.

Finally, Microsoft also errs in seeking to newly require that all “active nodes” must employ 

a respective user database. The doctrine of claim differentiation proscribes Microsoft’s attempt 

to import limitations from a dependent claim into an independent claim. Phillips v. AWH Corp., 

415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc) (“The presence of a dependent claim that adds a 

particular limitation gives rise to a presumption that the limitation in question is not present in the 

independent claim.”). While independent claim 1 recites various limitations directed to the “active 

nodes” term, claim 1 does not recite a “user database” element. By contrast, claim 8, which 

depends from claim 1, further recites (in part) “provisioning each of the plurality of nodes with a 

1 The specification confirms elsewhere that a node need not necessarily include an AAA server 

but rather may support a server external thereto. (See, e.g., id., 3:7-9.) (“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.”)

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 11 of 38
7

duplicate copy of a user database, each of said user databases being employed by its respective 

node to carry out AAA functions.” Microsoft’s erroneous construction appears to be an attempt 

to impermissibly import limitations from claim 8 into claim 1. This is contrary to well established 

law. Id.

4. “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”

The disputed “monitoring” phrases require no construction here. As recited in claim 1, the 

disputed phrase recites “monitoring the active nodes to determine if one of the active nodes gets 

disconnected from the network.” Independent claim 18, also written in method form, similarly 

recites “monitoring the active nodes to detect if one becomes disconnected from the network[.]” 

Independent claims 1 and 18 do not expressly attribute their respective “monitoring” to any 

particular element(s); and thus both claims are agnostic as to whether the claimed “monitoring” is 

effected exclusively by one active node monitoring another. This plain reading of the claim 

language is confirmed by dependent claim 3, which recites “[t]he method of claim 1, wherein each 

active node carries out the monitoring of the other.” 

Microsoft’s construction should be rejected as another attempt to import limitations (this 

time from claim 3 into claim 1). Phillips, 415 F.3d at 1315. Specifically, Microsoft errs in seeking 

to rewrite the “monitoring” step of claim 1 to require, instead, “two active nodes monitoring one 

another to detect if one becomes disconnected from the network.” Such a construction should be 

rejected at least because claim 3 confirms that claim 1 encompasses, though does not itself require, 

that “each active node carries out the monitoring of the other.” Id. 

Independent claim 11 differs from claims 1 and 18 in that claim 11 is directed (in its 

preamble) to “[a] wireless communication network” and recites its “monitoring” phrase in the 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 12 of 38
8

context of “a subset [of the plurality of nodes] which are active nodes that in fact carry out the 

AAA functions for the network by employing their respective user databases, said active nodes 

monitoring one another to detect if an active node becomes disconnected from the network[.]” 

Independent 11 is likewise agnostic as to the number of nodes in the “subset thereof which are 

active nodes.” This is confirmed by dependent claim 16, which recites “[t]he wireless 

communication network of claim 11, wherein the subset includes no more than two of the plurality 

of nodes.” Claim 16 confirms that claim 11 encompasses, though is not limited to, the scenario 

where precisely two active nodes are monitoring one another to detect if an active node becomes 

disconnected from the network. This provides an additional basis to reject Microsoft’s 

construction is violating the doctrine of claim differentiation, as Microsoft’s construction would 

incorrectly restrict all “monitoring” recited in the independent claims to “two active nodes 

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

Accordingly, for multiple reasons, the claim language itself reveals Microsoft’s error in 

seeking to indiscriminately define the disputed “monitoring” phrases to all require “two active 

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

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

The phrase “each of said nodes having a user database” (recited only in the preamble of 

independent claim 18) uses straightforward English and requires no construction. Microsoft errs 

in seeking to redraft the disputed phrase to require, instead, “each of said nodes maintaining its 

own user database.”2

 Microsoft’s impermissible rewrite should be rejected as not required by 

claim terms nor unambiguously required by either the specification or the prosecution history. 

2 Because Microsoft seeks construction of this term, which is recited only in the preamble of claim 

18, Microsoft evidently takes the position that the preamble of Claim 18 is limiting.

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 13 of 38
9

Dayco Prods., Inc. v. Total Containment, Inc., 258 F.3d 1317, 1327 (Fed. Cir. 2001); K-2 Corp. v. 

Salomon S.A., 191 F.3d 1356, 1362-63 (Fed. Cir. 1999).

Microsoft errs in apparently seeking to newly require an exclusive, one-to-one relationship 

between node and user database, where each node must maintain (a word not recited in claim 18) 

its own database. Microsoft’s new, narrowing couplet “its own” is found nowhere in the ’702 

patent. The intrinsic evidence contains no unambiguous disclaimer of the possibility for two nodes 

using the same user database, for example. Microsoft also errs by proposing to replace the word 

“having” with “maintaining” instead. It is unclear why Microsoft refuses to accept the patentee’s 

word choice of “having” in the recited context. Because the ’702 patent specification uses both

words, the patentee’s word choice here of “having” should be given meaningful effect.

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

Given Microsoft has proposed constructions for “the AAA functions” and “active nodes” 

it is surprising it challenges the presumed definiteness of the phrase “activating the AAA functions 

of the active nodes” (recited in claim 1). Microsoft appears to only take umbrage with word 

“activating” in the recited context. According to Microsoft, “[a] Skilled Artisan would not be able 

to reasonably understand how this limitation is satisfied because the AAA functions of an active 

node are, by definition, already activated.” Microsoft’s Invalidity Contentions dated Nov. 6, 2020, 

at 42 (“461-MIC”). Microsoft is wrong.

The claim langue in question “inform[s] those skilled in the art about the scope of the 

invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910, 

134 S. Ct. 2120, 2129 (2014). Claim 1 recites the claim language in question in the context of 

“(a) selecting two of the plurality of nodes to be active nodes; [and] (b) activating the AAA 

functions of the active nodes[.]” It is significant that step (a) of claim 1 recites the verb form “to 

be” (i.e., “to be active nodes”). This word choice makes clear that the nodes selected in step (a) 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 14 of 38
10

are those that will become “active nodes” by executing the “activating” step (b). In step (b), 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). Microsoft’s Invalidity Contentions do not provide 

clear and convincing evidence sufficient to rebut the presumption of definiteness of “activating the 

AAA functions of the active nodes” (as recited in claim 1). 

B. Terms of the ’702 patent which Microsoft seeks to challenge as indefinite

7. “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 seeks to challenge as indefinite certain “geographic distance” limitations recited 

in claims 2 and 5-7 (all depending directly or indirectly from claim 1). 461-MIC, 41-42. 

Microsoft’s Invalidity Contentions identify three bases for the indefiniteness objection. Id. Each 

alleged basis lacks merit.

Microsoft first alleges (without citation) that “there are multiple methods of calculating 

geographic distance (e.g., flat surface, spherical surface, and ellipsoidal surface methods) and the 

specification does not identify any single method.” Id. Even if one were to take Microsoft at its 

word, it nevertheless has failed to explain how any of the purported “different methods of 

calculating” would produce different results here. If a collection of nodes that may each be 

selected as active nodes are roughly spaced along a line, for example, 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 (i.e., vis-à-vis other possible pairs). The pair having 

the maximized distance would be the same regardless of how the distance values are calculated. 

This result does not change if the nodes are interspaced in various geographic locations that do not 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 15 of 38
11

roughly form a line. The pair with the maximized geographic distance therebetween is 

determinable with reasonable certainty; and neither the claim language nor the legal standard 

demand absolute certainty as to the value of the maximized distance (e.g., in terms of feet or 

miles).

Microsoft next alleges, without referring to any of the challenged claims in particular, that 

“the claim does not specify how to determine when a ‘geographic distance’ is “maximized.” Id. 

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, neither of which is a challenge based on the distinct 

definiteness requirement. See North American Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 

1571, 1579 (Fed. Cir. 1993) (distinguishing objections of “inoperativeness under 35 U.S.C.A. 

§ 101 or lack of enablement under 35 U.S.C.A. § 112, ¶ 1” from that of indefiniteness); Augme 

Techs., Inc. v. Yahoo! Inc., 755 F.3d 1326, 1340 (Fed. Cir. 2014) (same); TQ Delta, LLC v. 2Wire, 

Inc., 2019 WL 1553805, *9 (D. Del. 2019) (granting patentee summary judgment that a challenged 

claim was not invalid for indefiniteness, the court finding that the accused infringer’s technical 

expert’s opinion conflated lack of written description or enablement with indefiniteness since the 

claim term and its scope was understandable, and the technical expert’s opinion only went to 

whether it could be performed). In any event, a person of ordinary skill in the art, having reviewed 

the teachings of the ’702 patent, would be able to compare respective geographic distances 

between pairs of nodes to select, with reasonable certainty, the pair with the maximum distance 

therebetween. 

Finally, Microsoft argues “even assuming for purposes of argument that a ‘maximized’ 

geographic distance could be measured and determined, a Skilled Artisan would still not be able 

to choose two active nodes such that a ‘geographic distance’ between them is ‘maximized’ at least 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 16 of 38
12

because the geographic distance between any two nodes is fixed and can be neither maximized nor 

minimized.” 461-MIC, 41. Here again, Microsoft conflates indefiniteness with other 

considerations of validity. Mere objections of inoperability are “irrelevant to definiteness under 

§ 112, ¶ 2” and such objections say “nothing about a skilled artisan’s understanding to the bounds 

of the claimed invention.” Miles Laboratories, Inc. v. Shandon Inc., 997 F.2d 870, 875, (Fed. Cir. 

1993). Furthermore, Microsoft’s objection fails to comprehend that the pair of nodes with the 

maximized geographic distance therebetween is determinable with reasonable certainty, as 

explained above.

For the foregoing reasons, Microsoft’s Invalidity Contentions do not provide clear and 

convincing evidence sufficient to rebut the presumption of definiteness of the identified 

“geographic distance” limitations recited only in certain dependent claims.

8. “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 purports to challenge the presumed definiteness of the phrases “logging changes 

to the user databases for the active nodes thereby updating the same to reflect changes in 

information contained therein” (recited in claims 9 and 18) and “wherein each of the active nodes 

logs changes to its user database thereby updating the same to reflect changes in information 

contained therein” (recited in claim 13). 461-MIC, 43. However, Microsoft’s Invalidity 

Contentions fail to offer clear and convincing evidence sufficient to rebut the presumption of 

definiteness. 

In its Invalidity Contentions, Microsoft first argues that “a Skilled Artisan would not be 

able to ascertain with certainty whether “logging changes to the user databases” means using a 

database to log information that has changed or logging when information in a database changes 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 17 of 38
13

(or something else entirely).” Id. Microsoft’s use the word “logging” in its objection is a tacit 

admission that the word “logging” is not itself indefinite in the recited context. Microsoft’s 

argument that the recitation “logging changes to the user database” encompasses multiple possible 

embodiments does not support an argument of indefiniteness because [b]readth is not 

indefiniteness.” Biosig Instruments, Inc. v. Nautilus, Inc., 715 F.3d 891, 902, (Fed. Cir. 2013), 

vacated on other grounds and remanded, 572 U.S. 898, 913 (2014), adhered to on remand, 783 

F.3d 1374, 1382-84, (Fed. Cir. 2015). 

Contrary to what Microsoft suggests, it is also immaterial to the question of indefiniteness 

whether the claim language sufficiently specifies (at least to Microsoft’s liking) precisely how the 

claimed “logging” is to be performed. An objection concerning alleged inoperativeness under 35 

U.S.C.A. § 101 or lack of enablement under 35 U.S.C.A. § 112, ¶ 1 is not a basis to challenge the 

distinct definiteness requirement. See North American Vaccine, Inc. v. American Cyanamid Co., 

7 F.3d 1571, 1579 (Fed. Cir. 1993) (distinguishing objections of “inoperativeness under 35 

U.S.C.A. § 101 or lack of enablement under 35 U.S.C.A. § 112, ¶ 1” from that of indefiniteness); 

Augme Techs., Inc. v. Yahoo! Inc., 755 F.3d 1326, 1340 (Fed. Cir. 2014) (same); TQ Delta, LLC 

v. 2Wire, Inc., 2019 WL 1553805, *9 (D. Del. 2019) (granting patentee summary judgment that a 

challenged claim was not invalid for indefiniteness, the court finding that the accused infringer’s 

technical expert’s opinion conflated lack of written description or enablement with indefiniteness 

since the claim term and its scope was understandable, and the technical expert’s opinion only 

went to whether it could be performed). 

Microsoft next argues that “a Skilled Artisan would be unable to ascertain with reasonable 

certainty whether ‘updating the same’ refers to user databases, active nodes, some combination of 

the two, or some undefined ‘log.’” 461-MIC, 43. Microsoft’s conclusory assertion cannot 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 18 of 38
14

withstand scrutiny in view of the intrinsic evidence. As recited in claims 9 and 18, the clause 

“... updating the same ...” appears in the fuller context of “logging changes to the user databases 

for the active nodes thereby updating the same to reflect changes in information contained therein.” 

The clause “to reflect changes in information contained therein” modifies the clause “updating the 

same” and thereby confirms that the element referred to as “the same” is the one that “reflect[s] 

changes in information contained therein.” In view of this definitive context, and given the same 

step further recites, at the outset, “logging changes to the user databases”, a person of ordinary 

skill in the art would readily recognize that “updating the same” refers back to “the user databases” 

term. 

This understanding is further confirmed by comparing relevant claim language recited in 

dependents claim 13 and 14. Claim 13 recites (in part) “wherein each of the active nodes logs 

changes to its user database thereby updating the same to reflect changes in information contained 

therein.” Claim 14, which depends from claim 13, further recites “wherein each of the active 

nodes communicates its logged changes to the other active nodes so that their user databases are 

similarly updated.” The identification (in claim 14) of “their user databases” as the elements that 

must be “similarly updated” confirms that (in claim 13) it is the “user database” that is the object 

of the “updating the same” clause.

This plain reading of the claim language in question is consistent with corresponding 

written description of the specification. For example, the specification includes the following 

description of a preferred embodiment: “[t]o maintain synchronization, any changes to the user 

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

active node so that its user database is similarly updated.” (’702 patent, 3:50-52.) This disclosed 

example expressly identifies the “user database” as being updated.

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 19 of 38
15

Finally, Microsoft argues that “a Skilled Artisan would not be able to determine with 

reasonable certainty what it means to ‘updat[e] the same to reflect changes in information 

contained therein’ at least because it is unclear what it would mean to update something to reflect 

a change that had already been made to that thing.” 461-MIC, 43. As discussed above, however, 

an objection concerning alleged inoperativeness under 35 U.S.C.A. § 101 or lack of enablement 

under 35 U.S.C.A. § 112, ¶ 1 is not a basis to challenge the distinct definiteness requirement. See, 

e.g., North American Vaccine, 7 F.3d at 1579; Augme Techs., 755 F.3d at 1326; TQ Delta, 2019 

WL 1553805, *9. Microsoft also overlooks the claim language in question, and the corresponding 

disclosure, refers to multiple “active nodes”. In view of this context, one of ordinary skill in the 

art would recognize that the invention as disclosed and claimed enables logging changes to one 

active node in a manner that facilitates similarly updating other active nodes. (See ’702 patent, 

3:50-52.) (“To maintain synchronization, any changes to the user database of one active node are 

logged, and the logged changes are communicated to the other active node so that its user database 

is similarly updated.”) 

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

A. Disputed terms of the ’160 patent which only Microsoft seeks to construe

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

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

The “selecting ...” step of claim 1 requires no construction and the Court should reject 

Microsoft’s attempt to add extraneous limitations. Adding limitations neither required by claim 

terms nor unambiguously required by either the specification or the prosecution history of a patent 

is impermissible. See, e.g., Cont’l Circuits LLC v. Intel Corp., 915 F.3d 788, 796–97 (Fed. Cir.), 

cert. denied, 140 S. Ct. 648 (2019); Dayco Prods., Inc. v. Total Containment, Inc., 258 F.3d 1317, 

1327 (Fed. Cir. 2001). 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 20 of 38
16

Microsoft errs in seeking to restrict the phrase “selecting two or more parameters” to 

require, instead, “selecting two or more different types of parameters.” Microsoft’s proposed 

construction here does not purport to define any term recited in the “selecting” step of claim 1. 

Rather, Microsoft seeks to add the extraneous requirement that the recited “two or more 

parameters” must each be of different types. This is a significant departure from the claim 

language as recited. Nothing in the intrinsic evidence, including the claim language Microsoft 

seeks to construe, unambiguously disclaims selecting two or more parameters of similar type. On 

the contrary, in describing an example embodiment, the specification provides a 

non-exhaustive list of example “parameters” that may be used together and then it states, 

“parameters of this kind enable the reliability of the network service to be determined, for 

example.” (’160 patent, 2:64-3:8, emphasis added.)

For analogous reasons, Microsoft also errs in interpreting “measuring and/or calculating at 

two or more times values of the network parameters” (as recited in claim 1) to require “measuring 

and/or calculating at two or more times values of the two or more different types of network 

parameters.” 

2. “network parameter”

The term “network parameter” is recited in claims 1 and 3 in plural form; and it also recited 

in claim 5 in the context of “determining a network parameter trend[.]” In each instance, the term 

“network parameter” requires no construction because the words “network” and “parameter” are 

both terms of art in the recited contexts. In addition, claim 1 provides definitive statements in the 

surrounding context, such as a “network parameter” being “representative of a network service 

and variable in time” and having “measured and/or calculated parameter values[.]”

Microsoft errs in seeking to rewrite “network parameter” as “measurable service level 

specifications from which service indicator values can be determined.” The claim language itself 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 21 of 38
17

refutes Microsoft’s untethered “measurable” requirement. The phrase “measured and/or 

calculated parameter values” (recited in claim 1) makes clear that the “values” of a “network 

parameter” are not necessarily measured values. That Microsoft uses the word “determined” in 

its construction for “network parameter” only undermines its position that the “determining” term 

requires construction in other recited contexts. 

Microsoft also errors in seeking to define “network parameter” (in the singular) as requiring 

multiple service level specifications “from which service indicator values can be determined.” 

Claim 1 does not recite service indicator values are determined from network parameters. Rather, 

claim 1 recites “determining ... the value of a service indicator as a function of said measured 

and/or calculated values” of the network parameters. This additional aspect of Microsoft’s 

construction should also be rejected as either untethered to what claim 1 actually recites, or as 

impermissibly rendering that portion of the claim language superfluous. Power Mosfet Techs., 

L.L.C. v. Siemens AG, 378 F.3d 1396, 1410 (Fed. Cir. 2004) (“interpretations that render some 

portion of the claim language superfluous are disfavored.”). 

It is anticipated that Microsoft will allege the specification contains lexicography by 

describing an example embodiment, in part, as follows: “[i]n 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.” (’160 patent, 2:64-67.) This statement is 

not offered in the specification as a definition, but rather as an alternative description. Moreover,

the statement expressly pertains to “a number of network parameters” according to a particular 

example embodiment. It is not unambiguously offered as explicit lexicography that necessarily 

pertains universally to all network parameters. See Fisher-Rosemount Sys., Inc. v. Invensys Sys., 

Inc., No. A-13-CA-587-SS, 2015 WL 1275910, at *11 (W.D. Tex. Mar. 19, 2015) (instructing that 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 22 of 38
18

“[l]exicography only arises when the patent drafter ‘clearly, deliberately, and precisely define[s] 

the term’” and that “[c]lear definitions are usually set off by quotation marks or are marked by the 

word ‘is.’”) (citing Sinorgchem Co., Shandong v. Int'l Trade Comm’n, 511 F.3d 1132, 1136 (Fed. 

Cir. 2007)); see also Resonate Inc. v. Alteon Websystems, Inc., 338 F.3d 1360, 1364–65 (Fed. Cir. 

2003) (“[T]he written description is not a substitute for, nor can it be used to rewrite, the chosen 

claim language.”). In any event, as discussed above, Microsoft’s construction departs from this 

exemplary statement in the specification in several respects (e.g., by introducing an extraneous 

“measurable” requirement and by further proposing the extraneous requirement “from which 

service indicator values can be determined”). 

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”

The “determining” limitations of claim 1 require no construction. The Court should give 

effect to the terms chosen by the patentee; and the Court should reject Microsoft’s proposed 

constructions for the “determining” terms as deviating from the plain and ordinary meaning, 

conflicting with intrinsic evidence, and erroneously rewriting the claims. See, e.g., K-2 Corp. v. 

Salomon S.A., 191 F.3d 1356, 1364 (Fed. Cir. 1999) (“Courts do not rewrite claims; instead, we 

give effect to the terms chosen by the patentee.”); Tex. Instruments, Inc. v. U.S. Int’l Trade 

Comm’n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (“[C]ourts can neither broaden nor narrow claims 

to give the patentee something different than what he has set forth.”). 

Microsoft first errs in attempting to rewrite “determining” as “computing” in the recited 

contexts. Nothing in either the ’160 patent itself or its prosecution history compels the erroneous 

rewrite Microsoft proposes. While the word “determining” appears throughout the ’160 patent in 

various contexts, the word “computing” does not appear even once in the specification. That the 

“service indicator” recited in claim 1 need not be computed in every instance is also confirmed, 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 23 of 38
19

for example, by the disclosure that “the indicator can also be defined by the values of different 

parameters at different times” (’160 patent, 2:62-63)—i.e., the determining may simply involve 

retrieving stored value(s). 

Microsoft’s construction also runs afoul of the presumption “that the use of . . . different 

terms in the claims connotes different meaning.” CAE Screenplates Inc. v. Heinrich Fiedler GmbH 

& Co. KG, 224 F.3d 1308, 1317 (Fed. Cir. 2000). Claim 1 “measuring and/or calculating” in 

addition to the “determining” limitations at issue. This explicit term differentiation, recited in the 

same claim, confirms “determining” is not interchangeable with either the “measuring” or 

“calculating” terms. Rewriting “determining” as “computing” in this context, however, risks 

unduly narrowing the scope of the “determining” term, especially if the recited term “calculating” 

and Microsoft’s extraneous word “computing” are considered synonyms.

Microsoft compounds the error of its impermissible rewrite by seeking to replace the 

recited phrase “as a function of” with “using” instead, though apparently only in certain instances. 

For example, Microsoft seeks to rewrite “determining at two or more times the value of a service 

indicator as a function of said measured and/or calculated parameter values” as, instead, 

“computing at two or more times the value of a service indicator using the measured and/or 

calculated parameter values.” For the phrase “determining as a function of the trend of the 

indicator a time of the service indicator crossing a defined threshold,” however, Microsoft uses 

phrase “as a function of” in its proposed construction, thereby recognizing this phrase should be 

afforded its plain and ordinary meaning. The court should give effect to the qualifying phrase 

chosen by the patentee—“as a function of”—which appears repeatedly throughout the ’160 patent.

4. “service indicator”

The “service indicator” term (recited in claim 1) requires no construction, particularly 

given the definitive context in which it is recited. Microsoft errors in seeking to rewrite the term 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 24 of 38
20

“service indicator” as “an indicator of the quality of a network service distinct from the network 

parameters.” Yet again, Microsoft impermissibly seeks to add limitations neither required by 

claim terms nor unambiguously required by either the specification or the prosecution history. See,

e.g., Cont’l Circuits, 915 F.3d at 796–97; Dayco Prods., 258 F.3d at 1327. 

The word “quality” appears but once in the ’160 patent, though only in the background 

section in the context of distinguishing disclosure of “[p]atent application WO /01/80492.” (’160 

patent, 1:14-19.) This background disclosure does not unambiguously require an extraneous 

“quality” limitation for the “service indicator” term. Moreover, nothing in the intrinsic evidence 

unambiguously requires that the claimed “service indictor” must itself pertain only to “the quality

of a network service” in particular.

Microsoft’s erroneous construction also unnecessarily injects ambiguity into a 

straightforward term that should simply be afforded its plain and ordinary meaning. It is unclear, 

for example, whether Microsoft’s proposed construction would require (1) “an indicator” that is 

itself “distinct from the network parameters” or, instead, (2) “a network service” that must itself 

be “distinct from the network parameters” (or something else). Regarding the first possibility, the 

interpretation that a “service indicator” must itself 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. (’160 patent, 4:11-33.) The Federal Circuit recently 

reiterated “[a] claim construction that ‘excludes the preferred embodiment is rarely, if ever, correct 

and would require highly persuasive evidentiary support.” Eko Brands, LLC v. Adrian Rivera 

Maynez Enterprises, Inc., 946 F.3d 1367, 1373 (Fed. Cir. 2020) (quoting SynQor, Inc. v. Artesyn 

Techs., Inc., 709 F.3d 1365, 1378–79 (Fed. Cir. 2013), which quotes Adams Respiratory 

Therapeutics, Inc. v. Perrigo Co., 616 F.3d 1283, 1290 (Fed. Cir. 2010)). The second possibility 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 25 of 38
21

also cannot withstand scrutiny. Claim 1 introduces the “service indicator” term in the context of 

it being determined “... as a function of said measured and/or calculated parameter values of the 

network parameters”—i.e., values of the “two or more parameters . . . representative of a network 

service”. This surrounding context refutes a contrived interpretation that the “service indicator” 

must somehow pertain to a distinct network service—i.e., one that must be distinct from network 

service(s) of which the selected parameters are representative. 

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

service indicator crossing a defined threshold”

In addition to the error addressed above (in addressing the “determining” steps in general), 

Microsoft further errs in seeking to restrict the phrase “a time of the service indicator crossing a 

defined threshold” (as recited in claim 1) to require, instead, “the time remaining for the indicator 

crossing a defined threshold.” Yet again, Microsoft does not seek to define any term, but rather it 

impermissibly seeks to narrow claim scope by adding extraneous limitations. This is contrary to 

established law addressed above. See, e.g., Cont’l Circuits, 915 F.3d at 796–97; Dayco Prods.,

258 F.3d at 1327.

The prosecution history contains no clear and unambiguous disavowal of claim scope 

compelling the extraneous limitations Microsoft seeks to add. Tech. Properties Ltd. LLC v. 

Huawei Techs. Co., 849 F.3d 1349, 1357 (Fed. Cir. 2017) (prosecution disclaimer doctrine “does 

not apply unless the disclaimer is ‘both clear and unmistakable to one of ordinary skill in the art.’”) 

(quoting Elbex Video, Ltd. v. Sensormatic Elecs. Corp., 508 F.3d 1366, 1371 (Fed. Cir. 2007). On 

the contrary, the prosecution history includes the statement that “[t]he trend indicators of the 

cla[i]med 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.” Remarks dated Nov. 19, 2007, to Office Action dated July 19, 2007, at p. 4 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 26 of 38
22

(emphasis added). Use of “for example,” “making it possible,” and “such as” in these remarks 

confirms that the function “time remaining for a threshold” is a non-limiting and exemplary 

advantage that the claimed “trend indicators” may possibly achieve. This comes nowhere close to 

a clear and unambiguous disavowal of claim scope. See Purdue Pharma L.P. v. Endo 

Pharmaceuticals Inc., 438 F.3d 1123, 1136 (Fed. Cir. 2006) (ruling that statements in the 

prosecution history that claimed “controlled release” drug product permitted control over pain in 

a substantially narrow dosage range than prior art products did not operate as a disclaimer because 

the statements described a property of using the product but not a necessary feature of the product).

B. Terms of the ’160 patent which Microsoft seeks to challenge as indefinite

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

and service parameter values”

Microsoft purports to object to the presumed definiteness of the entire phrase “neural 

network determines rules of association between a service trend and service parameter values” (as 

recited only in dependent claim 7). In its Invalidity Contentions, however, Microsoft limits its 

indefiniteness challenge to the phrase “rules of association” only. Microsoft’s Invalidity 

Contentions dated Nov. 6, 2020 (“454-MIC”), 49. According to Microsoft, “‘[r]ules of 

association’ is not a term of art and not something that would have a defined meaning to a Skilled 

Artisan.” Id. While Microsoft further alleges that “[t]he ’160 patent does not describe any ‘rules 

of association[,]’” Microsoft equivocates by presenting arguments “[t]o the extent weighting

constitutes a ‘rule of association[.]’” Id. Because Microsoft’s Invalidity Contentions fail to 

disclose a cognizable basis to dispute the presumed definiteness of the “rules of association” term, 

it has not and cannot meet its burden to overcome that presumption.

While the burden never shifts to the patentee to defend the presumed definiteness of a claim 

term, it is telling that Microsoft’s Invalidity Contentions overlook the informative context in which 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 27 of 38
23

the “rules of association” term is recited. Specifically, claim 7 recites “[t]he method of claim 6, 

further comprising a training step in which the neural network determines rules of association 

between a service trend and service parameter values.” The “association” is defined in the claim 

language as being “between a service trend and service parameter values”—i.e., between claim 

terms that Microsoft does not dispute are sufficiently definite. Furthermore, in view of the

surrounding context in which “rules of association” is recited, a person of ordinary skill in the art 

would naturally look to description in the specification corresponding to “a training step” as 

claimed. Even a cursory review would have revealed at least the following passage to be relevant:

Use of a neural network can comprise a plurality of steps. In a first time 

period, a training base is formed, based on experimental results, for 

example. The training base comprises a multitude of output neuron states as 

a function of input neuron states. During a training step, the training base is 

integrated into the neural network. The training step consists of determining 

the weights of the neural connections of the neural network using training 

rules. Error gradient backpropagation rules can be used. This method is 

known in the art and consists in weighting the links between the neurons 

and recurrently correcting the weightings. Thus the result obtained with a 

test weighting is compared with a result fixed previously in the training 

base. The recurrent process is interrupted when the error in respect of the 

output neurons is below a predetermined threshold. Neural network 

software is available, for example the Stuttgart Neural Network Simulator. 

The neural network can also be implemented in the form of an integrated 

circuit. The person skilled in the art knows how to choose an appropriate 

number of hidden layers as a function of the complexity of the network 

service to be monitored.

(’160 patent, 6:16-36.) The passage quoted above provides an example where the specification 

expressly invokes certain terms (e.g., “training step” and “rules”) recited in claim 7. 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 28 of 38
24

Accordingly, when the phrase “rules of association” is read in the fuller context in which 

it is recited in claim 7, and further considered in light of relevant disclosure in the remainder of 

the ’160 patent specification (e.g., including at least the passage quoted above), the claim language 

“inform[s] those skilled in the art about the scope of the invention with reasonable certainty.” 

Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). Microsoft has not disclosed 

in its Invalidity Contentions any cognizable basis to prove indefiniteness of this claim language by 

clear and convincing evidence.

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

the network service trend determined”

Microsoft’s Invalidity Contentions purport to raise indefiniteness and written description 

challenges of the phrase “calculating a mathematical expectation of financial loss as a function of 

the network service trend determined” (recited only in dependent claim 10). Yet Microsoft offers 

only a curt, single paragraph (reproduced below in its entirety) purportedly disclosing the entire 

basis for both challenges: 

The ’160 patent does not describe how a Skilled Artisan could determine 

with reasonable certainty a “financial loss” or “mathematical expectation.” 

For example, a Skilled Artisan would not understand the full scope of 

factors that can be considered when determining a “financial loss.” 

Additionally, a Skilled Artisan could not determine with reasonable 

certainty what constitutes a “mathematical expectation” of financial loss 

because that term has no ordinary meaning in the art and appears be 

duplicative of the “calculating” limitation. Finally, the description that 

corresponds to this limitation in the ’160 patent is insubstantial. A Skilled 

Artisan would not understand that the patentee possessed all modes of 

calculating financial loss based on such a description.

454-MIC, 50. 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 29 of 38
25

As shown by the block-quotation above, Microsoft’s objection focuses exclusively on the 

terms “financial loss” and “mathematical expectation.” Microsoft conflates the definiteness 

requirement with that of enablement and the written description, however. Microsoft first alleges 

that “[t]he ’160 patent does not describe how” to implement the claim language in question. Id. 

(emphasis added). Enablement is a distinct requirement of indefiniteness, however. See Biosig 

Instruments, Inc. v. Nautilus, Inc., 715 F.3d 891, 902, (Fed. Cir. 2013), vacated on other grounds 

and remanded, 572 U.S. 898, 913 (2014), adhered to on remand, 783 F.3d 1374, 1382-84, (Fed. 

Cir. 2015) (distinguishing “enablement under § 112, ¶ 1 [from] indefiniteness under § 112, ¶ 2”); 

see also Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1358 n.2 (Fed. Cir. 1999)

(noting “that definiteness and enablement are analytically distinct requirements, even though both 

concepts are contained in 35 U.S.C.A. § 112.”).

Microsoft’s other stated objections are also inapposite to a definiteness challenge. 

Microsoft’s strawman attack on uncertainty purportedly arising from “the full scope of factors”

(544-MIC, 50) is irrelevant here because the word “factors” is not recited in any claim. And 

because “[b]readth is not indefiniteness,”3 Microsoft’s assertion that a “Skilled Artisan would not 

understand that the patentee possessed all modes of calculating financial loss based on such a 

description” (544-MIC, 50) is unavailing to a definiteness challenge. An objection based on the 

premise that a patent does not include disclosure sufficiently commensurate with the scope of the 

claims, if relevant at all, “provide[s] grounds for invalidity under § 112, ¶ 1 and not § 112, ¶ 2.” 

Biosig, 715 F.3d at 902; see also In re Borkowski, 422 F.2d 904, 909 (C.C.P.A. 1970) (explaining 

that if the disclosure of the specification “is not commensurate in scope with the subject matter 

3 Biosig Instruments, Inc. v. Nautilus, Inc., 715 F.3d 891, 902, (Fed. Cir. 2013), vacated on other 

grounds and remanded, 572 U.S. 898, 913 (2014), adhered to on remand, 783 F.3d 1374, 1382-

84, (Fed. Cir. 2015) (citation omitted). 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 30 of 38
26

encompassed by a claim, that fact does not render the claim imprecise or indefinite or otherwise 

not in compliance with the second paragraph of § 112; rather, the claim is based on an insufficient 

disclosure.”) (emphasis added).

When considering actual claim language, as opposed to an untethered extraction thereof, 

claim scope is informed with reasonable certainty at least because (1) claim 10 recites the claimed 

“calculating” in terms of what must be calculated (“a mathematical expectation of financial loss”) 

and (2) it further recites the relevant definitional statement “as a function of the network service 

trend determined.” Moreover, as to the distinct requirement of enablement, 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. 

For the “mathematical expectation” term, Microsoft alleges only that “a Skilled Artisan 

could not determine with reasonable certainty what constitutes a ‘mathematical expectation’ of 

financial loss because that term has no ordinary meaning in the art and appears be duplicative of 

the ‘calculating’ limitation.” 454-MIC, 50. When properly considered within its context, however, 

the “mathematical expectation” is not duplicative of the “calculating.” It refers to what is being 

calculated—i.e., “calculating a mathematical expectation of financial loss as a function of the 

network service trend determined”.

For the foregoing reasons, Microsoft has not disclosed in its Invalidity Contentions any 

cognizable basis to prove indefiniteness of the “calculating” step of dependent claim 10 by clear 

and convincing evidence.

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

Microsoft purports to have preserved the right to challenge the presumed definiteness of 

the entire phrase “determining a capacity to provide a network service at a given time” (as recited 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 31 of 38
27

only in dependent claim 11). In its Invalidity Contentions, however, Microsoft focuses exclusively 

on the “capacity” term, arguing that “[a] Skilled Artisan would not be able to determine with 

reasonable certainty the meaning of ‘capacity.’” Microsoft’s Invalidity Contentions dated Nov. 6, 

2020 (“454-MIC”), 49. The only alleged basis Microsoft disclosed in its Invalidity Contentions 

for its definiteness challenge of the “capacity” term is that “[t]he ’160 patent indicates ‘capacity’ 

can refer to either a network’s ability to support a service or a service provider’s willingness to 

offer a service” and that “[t]he ’160 patent provides no basis for a Skilled Artisan to choose 

between these meanings (or other meanings of the term).” Id.

Regardless whether Microsoft has correctly characterized the ’160 patent specification as 

describing “capacity” in at least two alternative contexts, and WSOU does not concede this is so, 

this would not overcome the presumption of definiteness for the “capacity” term. Claim terms are 

typically written in a manner that encompasses multiple disclosed embodiments within their scope. 

There simply is no legal basis to conclude that a claim term is rendered indefinite where it allegedly 

encompasses each of at least two alternatives. As discussed above, “[b]readth is not 

indefiniteness.” Biosig, 715 F.3d at 902; see also Unwired Planet, LLC v. Apple Inc., 829 F.3d 

1353, 1358, (Fed. Cir. 2016) (noting that because the disputed claim term did not specify how the 

input was transmitted, the term was broad enough to cover a voice input transmitted over a voice 

or data channel, and it thus was error to construe “voice input” to be limited to a voice input 

transmitted over a voice channel). 

As Microsoft does not disclose in its Invalidity Contentions any other basis to dispute the 

presumed definiteness of the “capacity” term, Microsoft has not and cannot meet its burden to 

prove indefiniteness by clear and convincing evidence.

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 32 of 38
28

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

A. Disputed terms of the ’902 patent which only Microsoft seeks to construe

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

The term “network that branches, downstream of the collection point” (recited in 

independent claims 1 and 6) does not require court construction. Microsoft disagrees, yet it does 

not purport to define what any of the words recited in that phrase. Rather, as an apparent aside, 

Microsoft argues that the claim language “refers to a tree network.” Reducing claim language 

down to what it allegedly “refers” is not a proper construction.

Microsoft’s position should also be rejected as inconsistent with certain party admissions, 

of which the Court can and should take judicial notice. Specifically, Microsoft published a 

technical dictionary that offers multiple technical definitions for “branch” (as shown by the 

dictionary entry reproduced below). 

Blanton, A., and Haynes, S., Microsoft Computer Dictionary Fifth Edition, Microsoft Press, 2002, 

p. 22. See Ex. A. As shown above, one technical definition Microsoft published for “branch” is 

“[a]ny connection between two items such as blocks in a flowchart or nodes in a network.” It is 

significant that of the two alternative definitions Microsoft offers “branch,” only one of them refers 

to a “logical tree structure.” Id. The absence of any reference to a “tree structure” in the definition 

broadly referring to “[a]ny connection between ... nodes in a network” serves as a party admission 

that the word “branch” in the context of networking does not necessarily refer exclusively to a tree 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 33 of 38
29

network. For this additional reason, the Court should reject Microsoft’s non-definition offered 

here as “refers to a tree network.” 

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

The terms “estimating” and “estimate” (recited in claims 1 and 6, respectively) require no 

construction in their recited context, particularly given the specification here does not “clearly, 

deliberately, and precisely define[] the term[s].” Sinorgchem Co., Shandong v. Int’l Trade 

Comm’n, 511 F.3d 1132, 1136 (Fed. Cir. 2007); accord, Fisher-Rosemount Sys., Inc. v. Invensys 

Sys., Inc., No. A-13-CA-587-SS, 2015 WL 1275910, at *11 (W.D. Tex. Mar. 19, 2015)

(“[l]exicography only arises when the patent drafter ‘clearly, deliberately, and precisely define[s] 

the term.’”) (citing Sinorgchem, 511 F.3d at 1136) (second alteration original). Nevertheless, 

Microsoft seeks to rewrite the “estimating” and “estimate” terms as, instead, “calculating an 

approximate” and “a calculation of an approximate” (respectively). Thus, Microsoft not only 

refuses to accept the patentee’s straightforward word choice, Microsoft also errs in seeking to add

an extraneous “approximate” qualifier not recited in the claim language. 

The specification confirms such a departure from the claim language is unwarranted here. 

The ’902 patent discloses certain examples procedures, also referred to therein as algorithms, that 

may be “applied to estimate the [packet] loss rate”. (’902 patent, 4:11-12.) In those examples, it 

is application of certain exemplary process(es) or algorithm(s) that returns what is referred to as 

an estimate of a packet loss rate. To be clear, the specification does not describe the result of a 

given estimation as necessarily pertaining only to an approximation of a merely theoretical packet 

loss rate. Nor does the specification state that any particular process or algorithm is necessary 

required. (See, e.g., id., 4:15-18.) (“Those skilled in the art will understand that the precise process 

steps are subject to numerous variations, and as described are merely illustrative.”) What is 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 34 of 38
30

disclosed, in describing certain example embodiments, is that the estimated packet loss rate is the 

result obtained from applying any of the example procedure(s). In view of the intrinsic evidence, 

there is simply no need to adopt a construction that departs from the consistent “estimating” and 

“estimate” word choice of the patentee. 

3. “packet loss rate”

The parties have both identified “packet loss rate” (recited in independent claims 1 and 6) 

as a term for the court to construe. The ’902 patent, in describing an example embodiment, 

provides a clarifying statement concerning the “packet loss rate” applied there as follows: “the 

packet loss rate, i.e., the fraction of packets that are lost over a suitable time-averaging interval[.]” 

(’902 patent, 3:46-47.) Microsoft proposes adopting this statement verbatim as the construction 

for the “packet loss rate” term. Because Microsoft does not seek to have the Court separately 

define “time-averaging”, Microsoft would impermissibly have the jury determine whether and 

how that couplet—which is not recited in the claims—might affect claim scope. Under the present 

circumstances, WSOU presently proposes simplifying the construction of “packet loss rate” to 

mean “fraction of packets that are lost over a suitable time interval.”

B. Sole phrase of the ’902 patent which Microsoft seeks to challenge as indefinite

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 impermissibly conflates indefiniteness with other considerations of validity in 

raising objections to the limitation “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” (recited in dependent claims 4 and 5). Microsoft’s curt, two-sentence indefiniteness 

objection set forth in its Invalidity Contentions is reproduced below:

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 35 of 38
31

A Skilled Artisan would not reasonably understand this claim limitation 

because it requires the impossible. Neither mobile stations nor base stations 

are a “portion of a GPRS core network,” as the claim required. Both are part 

of the radio access network. 

Microsoft’s Invalidity Contentions dated Nov. 6, 2020 (“465-MIC”), 38. 

Microsoft’s conclusory objections of inoperability are “irrelevant to definiteness under 

§ 112, ¶ 2” and such objections say “nothing about a skilled artisan’s understanding to the bounds 

of the claimed invention.” Miles Laboratories, Inc. v. Shandon Inc., 997 F.2d 870, 875, (Fed. Cir. 

1993); see also See North American Vaccine, Inc. v. American Cyanamid Co., 7 F.3d 1571, 1579 

(Fed. Cir. 1993) (distinguishing objections of “inoperativeness under 35 U.S.C.A. § 101 or lack of 

enablement under 35 U.S.C.A. § 112, ¶ 1” from that of indefiniteness); Augme Techs., Inc. v. 

Yahoo! Inc., 755 F.3d 1326, 1340 (Fed. Cir. 2014) (same); TQ Delta, LLC v. 2Wire, Inc., 2019 

WL 1553805, *9 (D. Del. 2019) (granting patentee summary judgment that a challenged claim 

was not invalid for indefiniteness, the court finding that the accused infringer’s technical expert’s 

opinion conflated lack of written description or enablement with indefiniteness since the claim 

term and its scope was understandable, and the technical expert’s opinion only went to whether it 

could be performed). 

Microsoft’s indefiniteness objection is not only flawed as a matter of law, Microsoft also 

errs in seeking to add extraneous limitations out of thin air. The claim language does not restrict 

either “mobile stations” or base stations” as being part of a radio access network. Indeed, the 

phrase “radio access network” appears nowhere in the ’902 patent. Microsoft compounds its error 

by erroneously suggesting that the claim language defines both the “base stations” and the “mobile 

stations” as being the “portion of a GPRS network” itself. Not so. The claim language plainly 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 36 of 38
32

recites the “portion of a GPRS core network” as a distinct claim element “extending from the

collection point to a plurality of [base stations / mobile stations].” 

Accordingly, Microsoft’s two-sentence objection set forth in its Invalidity Contentions 

fails to provide clear and convincing evidence sufficient to rebut the presumption of definiteness 

of the phrases Microsoft identified, which are recited in dependent claims 4 and 5.

Dated: January 8, 2021 Respectfully submitted,

By: /s/ Ryan S. Loveless

James L. Etheridge 

Texas Bar No. 24059147 

Ryan S. Loveless 

Texas Bar No. 24036997 

Brett A. Mangrum 

Texas Bar No. 24065671 

Travis L. Richins 

Texas Bar No. 24061296 

Jeff Huang 

Etheridge Law Group, PLLC 

2600 E. Southlake Blvd., Suite 120 / 324 

Southlake, TX 76092 

Tel.: (817) 470-7249 

Fax: (817) 887-5950 

Jim@EtheridgeLaw.com 

Ryan@EtheridgeLaw.com 

Brett@EtheridgeLaw.com 

Travis@EtheridgeLaw.com 

Jeff@EtheridgeLaw.com 

Mark D. Siegmund

State Bar No. 24117055

mark@waltfairpllc.com

Law Firm of Walt, Fair PLLC.

1508 North Valley Mills Drive 

Waco, Texas 76710

Telephone: (254) 772-6400

Facsimile: (254) 772-6432

Counsel for Plaintiff WSOU Investments, LLC

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 37 of 38
33

CERTIFICATE OF SERVICE

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

via U.S. District Court [LIVE]- Document Filing System, to all counsel of record, on this the 8th

day of January, 2021.

/s/ Ryan S. Loveless

Ryan S. Loveless 

Case 6:20-cv-00454-ADA Document 49 Filed 01/08/21 Page 38 of 38