IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

WSOU INVESTMENTS, LLC D/B/A 

BRAZOS LICENSING AND 

DEVELOPMENT,

Plaintiff,

v. 

HUAWEI TECHNOLOGIES CO. 

LTD., ET AL.,

Defendants.

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§

§

§

§

§

§

§

§

§

§

CIVIL ACTION 6:20-cv-00534-ADA

CIVIL ACTION 6:20-cv-00536-ADA

CIVIL ACTION 6:20-cv-00538-ADA

CIVIL ACTION 6:20-cv-00542-ADA

PLAINTIFF’S OPENING CLAIM CONSTRUCTION BRIEF

Case 6:20-cv-00542-ADA Document 43 Filed 02/05/21 Page 1 of 25
i

Table of Contents

Table of Contents........................................................................................................................... i

Table of Authorities..................................................................................................................... iii

Exhibits ...........................................................................................................................................v

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

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

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

II. U.S. Patent No. 7,095,713 (Case No. 6:20-cv-00534).......................................................2

III. U.S. Patent No. 7,515,546 (Case No. 6:20-cv-00536).......................................................2

IV. U.S. Patent No. 7,872,973 (Case No. 6:20-cv-00538).......................................................3

A. Terms with Disputed Constructions.....................................................................3

1. “a message to the upstream device to reduce a rate at which 

packets are sent to the queuing device to prevent the queue 

from filling” (claims 1 and 9)” ..................................................................3

2. “the message” (claims 1 and 9) .................................................................4

3. “a module for, if the depth of the queue passes a 

predetermined threshold, sending a message to the upstream 

device to reduce a rate at which packets are sent to the queuing 

device to prevent the queue from filling, thereby preventing 

packet discarding and loss by the queuing device” (claim 9).................8

4. “a module for sending a message reporting the depth of the 

queue to the upstream device to thereby enable the upstream 

device to determine whether to reduce or increase the rate at 

which the upstream device sends packets to the queuing 

device” (claim 9).........................................................................................8

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

an upstream network device to thereby control a rate at which 

the upstream device receives packets from the upstream 

network device” (claim 9)........................................................................11

V. U.S. Patent No. 8,249,446 (Case No. 6:20-cv-00542).....................................................13

A. Terms with Disputed Constructions...................................................................13

Case 6:20-cv-00542-ADA Document 43 Filed 02/05/21 Page 2 of 25
ii

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

an [optical network component comprising an optical 

transmitter / optical transmission device]” (claims 1 and 15)..............13

2. “output indicator” (claims 1 and 15)......................................................15

3. “output threshold” (claim 1) / “output indicator threshold” 

(claim 15)...................................................................................................17

Case 6:20-cv-00542-ADA Document 43 Filed 02/05/21 Page 3 of 25
iii

Table of Authorities

Cases

Azure Networks, LLC v. CSR PLC,

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

Castlemorton Wireless, LLC v. Bose Corp.,

6:20-CV-00029-ADA, 2020 WL 6578418 (W.D. Tex. July 22, 2020).................................... 12

C-Cation Techs., LLC v. Time Warner Cable, Inc.,

2:14-CV-0059-JRG-RSP, 2015 WL 1849014 (E.D. Tex. Apr. 20, 2015).................................. 6

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.)........................................................................................................ 3, 15

Interval Licensing LLC v. AOL, Inc.,

766 F.3d 1364 (Fed. Cir. 2014)................................................................................................... 7

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

453 F.3d 1364 (Fed. Cir. 2006)................................................................................................. 10

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

572 U.S. 898 (2014)................................................................................................................ 2, 4

Phillips v. AWH Corp.,

415 F.3d 1303 (Fed. Cir. 2005)....................................................................................... 1, 13, 17

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

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

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

988 F.2d 1165 (Fed. Cir. 1993)............................................................................................. 4, 13

Vitronics Corp. v. Conceptronic,

90 F.3d 1576 (Fed. Cir. 1996)................................................................................................... 15

Williamson v. Citrix Online, LLC,

792 F.3d 1339 (Fed. Cir. 2015)................................................................................................... 8

Zeroclick, LLC v. Apple Inc.,

891 F. 3d 1003 (Fed. Cir. 2018).................................................................................................. 9

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Statutes

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

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Exhibits

Exhibit Description

A Appl. Ser. No. 11/377,578, Amendment of Jul. 27, 2010.

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

Development, IPR2021-00228, Petition for Inter Partes Review (Paper 2) (PTAB filed 

Nov. 30, 2020).

Case 6:20-cv-00542-ADA Document 43 Filed 02/05/21 Page 6 of 25
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Plaintiff WSOU Investments, LLC d/b/a Brazos License and Development (“WSOU”)

respectfully submits this claim construction brief in support of its proposed constructions.

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), cert. denied, 546 U.S. 

1170 (2006); 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 Micro-Devices, 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-00542-ADA Document 43 Filed 02/05/21 Page 7 of 25
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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 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. U.S. Patent No. 7,095,713 (Case No. 6:20-cv-00534) 

Neither party currently contends that claim terms of the ’713 patent require construction.

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

Neither party currently contends that claim terms of the ’546 patent require construction.

Case 6:20-cv-00542-ADA Document 43 Filed 02/05/21 Page 8 of 25
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IV. U.S. Patent No. 7,872,973 (Case No. 6:20-cv-00538)

A. Terms with Disputed Constructions

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

are sent to the queuing device to prevent the queue from filling” 

(claims 1 and 9)”

WSOU’s Proposed Construction Defendant’s Proposed Construction

Plain and ordinary meaning “a message controlling the upstream device to 

reduce a rate at which packets are sent to the 

queuing device to prevent the queue from 

filing”

This term should be given its plain and ordinary meaning.

First, Huawei errs by impermissibly attempting to add extraneous limitations that are 

neither required by claim language nor unambiguously required by either the specification or the 

prosecution history. 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).

Second, Huawei’s construction of “a message controlling the upstream device to reduce a 

rate at which packets are sent to the queuing device to prevent the queue from filing” uses the 

identical claim language except Huawei replaces the preposition “to” in the claim with the word 

“controlling” in Huawei’s construction.1 That Huawei uses the exact same claim language, nearly 

in its entirety, without proposing any definition for any of those other terms, only confirms that 

the claim language is plain on its face and no construction is required. 

Third, Huawei’s construction is also flawed because it ignores the surrounding claim 

language, which recites in broader context of “sending a message to the upstream device to reduce 

1

Emphasis is added unless otherwise noted.

Case 6:20-cv-00542-ADA Document 43 Filed 02/05/21 Page 9 of 25
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a rate at which packets are sent to the queuing device to prevent the queue from filling.” There is 

no requirement in the claim language that the message “control[]” the upstream device merely that 

“a message” is sent “to” the upstream device. The plain reading of the claim language informs that 

it is the act of “sending” that “reduce[s] a rate a which packets are sent to the queuing device ....” 

Huawei’s misguided attempt to qualify the message itself as “controlling” is flawed. See, e.g., K2 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.”).

2. “the message” (claims 1 and 9)

WSOU’s Proposed Construction Defendant’s Proposed Construction

Plain and ordinary meaning Indefinite 

This term should be given its plain and ordinary meaning and the term is not indefinite

because the claim language and specification informs one of skill in the art of the time of the 

invention “about the scope of the invention with reasonable certainty.” Nautilus, 572 U.S. at 910-

11. While Huawei has yet to articulate its indefiniteness theory, WSOU anticipates that Huawei 

will argue indefiniteness because the claim language twice recites to “sending a message” and then 

subsequently recites to “the message.” The relevant portion of claim 1 is reproduced below with 

added references in brackets:

[1b] if the depth of the queue passes a predetermined threshold, sending a message 

to the upstream device to reduce a rate at which packets are sent to the 

queuing device to prevent the queue from filling, thereby preventing packet 

discarding and loss by the queuing device;

[1c] sending a message reporting the depth of the queue to the upstream device to 

thereby enable the upstream device to determine whether to reduce or 

increase the rate at which the upstream device sends packets to the queuing

device; and

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

Case 6:20-cv-00542-ADA Document 43 Filed 02/05/21 Page 10 of 25
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to thereby control a rate at which the upstream device receives packets from 

the upstream network device.

’973 patent at 8:12-24. Independent claim 9 recites similar language.

Under the plain and ordinary meaning of the claim language, “the message” in element 1d 

is an antecedent reference to “a message” in element 1b. While all three elements 1b, 1c, and 1d 

recite “sending” either “a message” or “the message,” only elements 1b and 1d specify that the 

sending of the message is to either reduce or control a rate. For instance, element 1b recites 

“sending a message to the upstream device to reduce a rate.” Similarly, element 1d recites 

“sending the message from the upstream device to an upstream network device to thereby control 

a rate at which the upstream device receives packets from the upstream network device.” 

Reading “the message” in element 1d as an antecedent reference to “a message” in 1b also 

comports with the specification. Element 1b tracks the following description of one embodiment: 

“if the depth passes a predetermined threshold, a message is sent to the upstream device 120 to 

reduce a rate at which packets are sent to the queuing device 140 to prevent the queue from filling 

thereby preventing packet discarding and loss by the queuing device 140.” ’973 patent at 7:7-12. 

FIG. 1 (reproduced in annotated form below) depicts the upstream device 120 and queuing device 

140 and the red arrow depicts the message sent to the upstream device 120: 

Case 6:20-cv-00542-ADA Document 43 Filed 02/05/21 Page 11 of 25
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FIG. 1 of the ’973 patent (annotated)

The specification goes onto describe one embodiment where the queuing device in element 

1b is then sent (described as “forward” or “relay”) in element 1d: “the upstream device 120 may 

forward or relay a message from the queuing device 140 (i.e., with respect to controlling the rate 

at which packets are sent to the queuing device 140) to an upstream network device (not shown 

but similar to network device 110) in the network 100 to thereby control the rate at which the 

upstream device 120 receives packets from the upstream network device.” Id. at 6:26-32.

Annotated FIG. 1 illustrates the upstream network device in blue which is “not shown” in 

unannotated FIG. 1 but described as being “similar to the network device 110.” Id. The orange 

arrow depicts how, in the embodiment, the upstream queuing device 120 “forward[s] or relay[s]” 

the message from the queuing device 140 to the upstream network device. Accordingly, the claims 

themselves and in context of the specification provide certainty as to the meaning of “the message.” 

See C-Cation Techs., LLC v. Time Warner Cable, Inc., 2:14-CV-0059-JRG-RSP, 2015 WL 

1849014, at *17 (E.D. Tex. Apr. 20, 2015) (finding the claim term not indefinite under Nautilus

when “viewed in context of the claim language itself and the specification there is a reasonable 

Case 6:20-cv-00542-ADA Document 43 Filed 02/05/21 Page 12 of 25
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certainty as to the antecedent basis”).

In contrast to the relationship between elements 1b and 1d, the claim language of element 

1c specifies that the message “report[s] the depth of the queue to the upstream device.” Element 

1c then specifies that the sending “enables the upstream device to determine whether to reduce or 

increase the rate at which the upstream device sends packets to the queuing device.” Thus, in 

element 1c, the act of sending of the message itself does not affect rate. Rather, sending the 

message in 1c “enable[s]” the “upstream device to determine whether to reduce or increase the 

rate.” Accordingly, “a message” in element 1c is not what is being referenced by the antecedent 

“the message” in element 1d, and this is not a situation where “no informed and confident choice 

is available among the contending definitions.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 

1364, 1371 (Fed. Cir. 2014) (quoting Nautilus, 572 U.S. at 911 n.8) (internal quotation marks 

omitted). Here, the only possible reading is that “the message” in element 1d references “a 

message” in element 1b.

Case 6:20-cv-00542-ADA Document 43 Filed 02/05/21 Page 13 of 25
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3. “a module for, if the depth of the queue passes a predetermined 

threshold, sending a message to the upstream device to reduce a rate 

at which packets are sent to the queuing device to prevent the queue 

from filling, thereby preventing packet discarding and loss by the 

queuing device” (claim 9)

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

the upstream device to thereby enable the upstream device to 

determine whether to reduce or increase the rate at which the 

upstream device sends packets to the queuing device” (claim 9)

WSOU’s Proposed Construction Defendant’s Proposed Construction

Plain and ordinary meaning Subject to 35 U.S.C. § 112, ¶6 

Indefinite for failure to disclose sufficient 

structure.

Huawei errs in seeking to construe these two terms under 35 U.S.C. §112, ¶6 and as 

indefinite for failure to disclose sufficient structure for the reasons discussed below. Huawei’s 

attempt to invoke 35 U.S.C. §112, ¶6 runs afoul of several well-established claim construction 

canons.

2 

First, the lack of the word “means” in both of these claim 9 terms raises a rebuttable 

presumption against applying Section 112, ¶ 6. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 

1348 (Fed. Cir. 2015) (en banc). While the burden lies with Huawei to rebut the presumption, it 

failed to articulate any argument or evidence in its Invalidity Contentions as allegedly rebutting, 

or even addressing, the presumption against applying Section 112, ¶ 6 to claim 9.3 

Second, Huawei overlooks claim terms that connote structure to a person of ordinary skill 

in the art. The Federal Circuit reasoning in Zeroclick, LLC v. Apple Inc., 891 F. 3d 1003, 1007‒

2 WSOU has address both terms together given the overlap of issues but reserves the right to 

address any term-specific issues in subsequent briefing.

3

In its Identification of Extrinsic Evidence, Huawei has identified “[t]he testimony of Dr. Tal 

Lavian on the indefiniteness of claim[] ... 9 of the ‘973 Patent,” but has not provided the 

substance of Dr. Lavian’s testimony.

Case 6:20-cv-00542-ADA Document 43 Filed 02/05/21 Page 14 of 25
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09, (Fed. Cir. 2018) is instructive on this point. The Federal Circuit found the district court “legally 

erred by not giving effect to the unrebutted presumption against the application of § 112, ¶ 6,” and 

that the district court’s analysis was “couched in conclusory language” in concluding that 

“program” and “user interface code” were nonce words. Under Zeroclick, therefore, the words 

“program” and “code” are not properly considered per se nonce words in the context of the 

computing arts. Here, the claim language at issue is not purely functional, but rather recites specific 

structure that can perform respective tasks set forth in the body the claims. Claim 9, for instance,

is directed to “[a] system for incorporating a queuing device as a lossless processing stage in a 

network device in a communications network between an upstream device and a downstream 

device in the network device, the system comprising: a processor coupled to the queuing device;

and, modules executed by the processor, the modules including [the module term at issue here].” 

This claim language comports with the specification that describes that “the data processing system 

300 includes computer executable programmed instructions for directing the system 300 to 

implement the embodiments of the present invention,” and further that the “programmed 

instructions may be embodied in one or more software modules 331 resident in the memory 330 

of the data processing system 300.” ’973 patent at 4:59-64. FIG. 2 (reproduced below) shows the 

relationship:

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Thus, the claims do not merely recite a “module” but instead “modules executed by 

processors,” where the modules can be resident in the memory. Both the processor and memory 

are sufficient structure. See LG Electronics, Inc. v. Bizcom Electronics, Inc., 453 F.3d 1364, 1372

(Fed. Cir. 2006), cert. granted, 128 S. Ct. 28 (U.S. 2007) (ruling that term “control unit” in a claim 

limitation reciting “a control unit for controlling the communication unit, wherein the control unit 

comprises a [central processing unit (‘CPU’)] and a partitioned memory system” was not a meansplus-function limitation) rev’d on other grounds sub nom. In LG, the Federal Circuit held that the 

presumption was not overcome because the “claim itself provides sufficient structure, namely ‘a

CPU and a partitioned memory system,’ for performing the stated function, ‘controlling the 

communication unit.’” Here, similar to LG, 35 U.S.C. §112, ¶6 should not be invoked because the 

claim itself provides sufficient structure, including memory and a processor. See id.

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

upstream network device to thereby control a rate at which the 

upstream device receives packets from the upstream network device” 

(claim 9) 

WSOU’s Proposed Construction Defendant’s Proposed Construction

Plain and ordinary meaning except that the 

phrase “e stream” should be “upstream”

Subject to 35 U.S.C. § 112, ¶6 

Indefinite for failure to disclose sufficient 

structure.

For this term, the same arguments that apply to the two prior “module” terms also apply to 

this term and are incorporated by reference. 

In addition, while WSOU initially identified the above-listed term as having its plain and 

ordinary meaning, upon further reflection, WSOU now contends that the Court should construe 

just the phrase “e stream” within the overall term as “upstream” and that the balance of the term 

should be given its plain and ordinary meaning. The phrase “e stream” was introduced by a USPTO 

clerical error and should be construed here as “upstream” to correct that error. This error appears 

to have been introduced by the failure of the USPTO’s processes to properly recognize text in a 

scanned document in the file history. This term was originally submitted via an Amendment to 

pending claim 9 (which issued as claim 9 as well), and did not include the “e stream” error:

Case 6:20-cv-00542-ADA Document 43 Filed 02/05/21 Page 17 of 25
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Appl. Ser. No. 11/377,578, Amendment of Jul. 27, 2010, at 5-6 (highlighting added) (Ex. A). 

There was no recitation of “e stream” in the file history, including the original application. 

Nevertheless, the ’973 patent issued with the term “e stream” replacing “upstream” in the 

Amendment. “[D]istrict courts may correct an error in a patent where no certification has been 

issued if: (1) the correction is not subject to reasonable debate to a person of ordinary skill in the 

art based on consideration of the claim language and the specification; and (2) the prosecution 

history does not suggest a different interpretation of the claims.” Castlemorton Wireless, LLC v. 

Bose Corp., 6:20-CV-00029-ADA, 2020 WL 6578418, at *2 (W.D. Tex. July 22, 2020). Here, 

both prongs are met. Under prong (1), it does not appear that Huawei disputes that phrase “e 

stream” means “upstream.” Huawei has not identified “e stream” separately and takes the position 

that the broader “module” phrase is subject to 35 U.S.C. §112, ¶6 and “[i]ndefinite for failure to 

disclose sufficient structure.” To the extent Huawei maintains that no correction is necessary, such a 

position would not be “subject to reasonable debate to a person of ordinary skill in the art based on 

consideration of the claim language and the specification” for the reasons noted above. Under 

prong (2), the prosecution history does not suggest a different interpretation as noted above.

Accordingly, the above-listed term should be given its plain and ordinary meaning except that “e 

stream” should be construed as “upstream.”

Case 6:20-cv-00542-ADA Document 43 Filed 02/05/21 Page 18 of 25
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V. U.S. Patent No. 8,249,446 (Case No. 6:20-cv-00542) 

A. Terms with Disputed Constructions

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

network component comprising an optical transmitter / optical transmission 

device]” (claims 1 and 15)

WSOU’s Proposed Construction Defendant’s Proposed Construction

Plain and ordinary meaning “[A method of/Apparatus for] regulating rogue 

behavior by a subscriber-based [optical network 

component comprising an optical 

transmitter/optical transmission device]”

This term should be given its plain and ordinary meaning. 

First, Huawei errs by attempting to replace the claim language that recites the simple 

prepositional phrase “in an” with “by a subscriber-based” in its construction. Huawei’s “by a 

subscriber-based” language is impermissible because the language is neither required by claim 

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

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

Second, Huawei commits the “cardinal sin” of importing limitations from exemplary 

disclosure in the specification into the claims. Phillips, 415 F.3d at 1319–1320 (“One of the 

cardinal sins of patent law [is] reading a limitation from the written description into the claims.”) 

(quoting SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1340 (Fed. 

Cir. 2001)). In its proposed construction, Huawei attempts to modify the term “optical network 

component” as being “subscriber-based.” But in the specification the phrase “subscriber-based” is 

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

Case 6:20-cv-00542-ADA Document 43 Filed 02/05/21 Page 19 of 25
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The present invention will now be described in terms of detecting rogue behavior 

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

present invention has applicability for use in other optical transmission devices 

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

meant to include all subscriber-based optical network components.

’446 patent at 4:32-34.

The grammatical context of the passage cited above refutes Huawei’s construction. The 

specification expressly states that the “present invention” applies to “other optical transmission 

devices and in other networks” and is not limited to ONTs. See id.; accord id. at Abstract (“The 

apparatus, for example, may be implemented in one or more of the ONTs in a PON.”); id. at 9:54-

56 (“Note that the sequences of operation illustrated herein are exemplary illustrations and not 

meant to exclude other embodiments.”). Moreover, even if the scope of the terms “optical network 

component” (claim 1) or “optical transmission device” (claim 15) were limited to ONTs (which 

WSOU does not concede), the specification clarifies that the term “ONT” is open-ended and 

“meant to include all subscriber-based optical network components.” Id. at 4:32-34. The specific 

use of the open-ended phrase “include” clearly shows that ONTs “include” subscriber-based 

optical network components but are not limited to such components. 

Third, Huawei tacitly concedes that no construction of this term is necessary by not seeking 

construction of this term in parallel IPR proceedings involving the same patent. On November 30, 

2020—just three weeks before the parties exchanged terms for construction—Huawei filed a 

petition for inter partes review of the ’446 patent in the PTAB. Huawei Technologies Co., Ltd. v. 

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

Partes Review (Paper 2) (PTAB filed Nov. 30, 2020) (“IPR Petition”) (Ex. B). Huawei’s IPR 

Petition only seeks express construction of four terms, none of which are sought to be construed 

by Huawei before this Court. See IPR Petition at 8-9. While not seeking an express construction 

Case 6:20-cv-00542-ADA Document 43 Filed 02/05/21 Page 20 of 25
15

of the preamble as it does before this Court, Huawei argued that its O’Byrne reference disclosed 

the limitations of the preamble of both claims 1 and 15 without making any reference to either 

“subscriber” or “subscriber-based.” Id. at 17-18. Notably, the terms “subscriber” or “subscriberbased” do not appear in Huawei’s IPR Petition. See generally id.

2. “output indicator” (claims 1 and 15)

WSOU’s Proposed Construction Defendant’s Proposed Construction

Plain and ordinary meaning “indicator indicating an optical output being 

transmitted ”

This term should be given its plain and ordinary meaning. 

First, the “output indicator” requires no construction, particularly in view of the contexts 

in which it is recited in independent claims 1 and 15. For instance, claim 1 recites the step of 

“monitoring a selected optical transmitter output indicator during at least one monitoring 

window.” ’446 patent at 10:5-6. Claim 15 recites an apparatus comprising a “register for storing a 

suspect rogue flag if the output indicator monitor detects that an output indicator threshold has 

been exceeded during a monitoring window.” Id. at 10:62-63. In identifying this term for 

construction, Huawei does not seek to define either “output” or “indicator.” Rather, Huawei uses 

those same words in its construction, thereby confirming they should simply be afforded their plain 

and ordinary meaning. Huawei errs, however, in seeking to add the extraneous limitations “an 

optical ... being transmitted.” This would violate the proscription against adding a limitation that 

is 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, 258 F.3d at 1327. 

Second, the specification expressly states that not all output indicators need to be the output 

transmission itself. ’446 patent at 5: 44-47 (“Here it is noted that the other output indicator, if any, 

is something other than the burst enable signal itself, which may sometimes if not frequently be 

Case 6:20-cv-00542-ADA Document 43 Filed 02/05/21 Page 21 of 25
16

less successful when used in detecting rogue behavior.”). Huawei’s proposed construction 

expressly excludes at least a preferred embodiment and for at least that reason alone, should be 

rejected. Vitronics Corp. v. Conceptronic, 90 F.3d 1576, 1584-85 (Fed. Cir. 1996) (noting that a 

construction that reads out a preferred embodiment is rarely, if ever, correct and would require 

highly persuasive evidentiary support).

Third, as noted above, Huawei tacitly concedes that no construction of this term is 

necessary by not seeking construction of this term in parallel IPR proceedings involving the same 

patent. See IPR Petition at 8-9. While Huawei did not expressly seek construction of this term, 

Huawei did seek an implied construction before the PTAB that conflicts with the construction it 

now advocates before this Court. Namely, Huawei argues that the O’Byrne reference in its IPR 

Petition discloses the following claim element: “monitoring a selected optical transmitter output 

indicator during at least one monitoring window.” IPR Petition at 18-28. In so taking that position, 

Huawei characterized O’Byrne in relation to that claim element as follows:

Accordingly, these teachings by O’Byrne meet this claim element for monitoring a 

selected optical transmitter output indicator (e.g. amount of optical power, a period 

of time, or an amount of power past a threshold period of time, or other laser errors) 

during at least one monitoring window (e.g. one or all of the time slots 60, 62, and 

64).

Id. at 21.

Thus, before the PTAB, Huawei takes the position that examples of “output 

indicator” means “amount of optical power, a period of time, or an amount of power past 

a threshold period of time, or other laser errors.” See id. In contrast, before this Court, 

Huawei advocates that the very same term should mean “indicator indicating an optical 

output being transmitted.” Huawei has not explained—before the PTAB or this Court—

why it should be allowed to take contradictory claim constructions before the two forums

involving the very same patent and the very same claim term.

Case 6:20-cv-00542-ADA Document 43 Filed 02/05/21 Page 22 of 25
17

3. “output threshold” (claim 1) / “output indicator threshold” (claim 15)

WSOU’s Proposed Construction Defendant’s Proposed Construction

Plain and ordinary meaning “time length or a percentage of a total time 

window duration”

This term should be given its plain and ordinary meaning. 

First, Huawei commits the “cardinal sin” of importing limitations from exemplary 

disclosure in the specification into the claims. Phillips, 415 F.3d at 1319–1320 (“One of the 

cardinal sins of patent law [is] reading a limitation from the written description into the claims.”) 

(quoting SciMed, 242 F.3d at 1340). In its proposed construction, Huawei attempts to limit the 

terms “output threshold” and “optical indicator threshold” as “time length or percentage of a total 

time window duration.” But while the specification describes one preferred embodiment in relation 

to time or percentage of time, the specification is clear that “other embodiments” are not limited 

and can be “almost any value:”

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

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

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

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

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

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

on. This can be expressed, for example as a percentage of the total window duration. 

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

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

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

almost any value. 

’446 patent at 6:60-64. 

The grammatical context of the passage cited above refutes Huawei’s construction—a 

threshold can be “any value.” See id. Moreover, the specification describes the concept of 

“threshold” more broadly and consistent with its plain meaning as something that can or cannot be 

exceeded. Id. at 7:11-13 (“if the suspect rogue flag is set and a subsequent monitoring step 

measures a value that does not exceed the threshold value”); id. at 7:18-19 (“suspect rogue flag 

indicates activity exceeding a threshold”).

Second, as noted above, Huawei tacitly concedes that no construction of this term is 

Case 6:20-cv-00542-ADA Document 43 Filed 02/05/21 Page 23 of 25
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necessary by not seeking construction of this term in parallel IPR proceedings involving the same 

patent. See IPR Petition at 8-9. While not seeking an express construction, Huawei in its IPR 

petition reads “output threshold” inconsistently with the narrow position it advocates before this 

Court. For instance, before the PTAB, Huawei summarizes its position with respect to “output 

threshold” in claim 1 as follows:

Accordingly, a POSITA would have recognized that the output threshold would be 

an amount of power threshold, a period of time threshold, or an amount of power 

past a threshold period of time as taught by O’Byrne—and O’Byrne teaches this 

method using each of these thresholds.

IPR Petition at 31.

Thus, before the PTAB, Huawei asserts a broad, implicit construction of “output threshold” 

that would include not only time-based threshold but also ones based on power. In its IPR Petition, 

Huawei disclosed the existence of this Case and the scheduled Markman hearing. Id. at 8. But 

Huawei failed to explain why it is taking contradictory positions in the two parallel proceedings

other than to state that the claim construction IPR proceedings were “[f]or purposes of this [IPR] 

proceeding only.” See id. at 8. Nor does Huawei’s IPR Petition reference the concept of 

“percentage of time” or the threshold being limited to a “window duration.” The Court should not 

condone Huawei’s inconsistent positions between the PTAB and this Court on the same patent for 

the very same term.

Dated: February 5, 2021 Respectfully submitted,

By: /s/ Ryan 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 

Jeffrey Huang

Brian M. Koide

Etheridge Law Group, PLLC 

2600 E. Southlake Blvd., Suite 120 / 324 

Case 6:20-cv-00542-ADA Document 43 Filed 02/05/21 Page 24 of 25
19

Southlake, TX 76092 

Tel.: (817) 470-7249 

Fax: (817) 887-5950 

Jim@EtheridgeLaw.com 

Ryan@EtheridgeLaw.com 

Brett@EtheridgeLaw.com 

Travis@EtheridgeLaw.com 

Jhuang@EtheridgeLaw.com

Brian@EtheridgeLaw.com

Mark D. Siegmund

State Bar No. 24117055

mark@waltfairpllc.com

Law Firm of Walt, Fair PLLC.

1508 North Valley Mills Drive 

Waco, Texas 76710

Telephone: (254) 772-6400

Facsimile: (254) 772-6432

Counsel for Plaintiff WSOU Investments, LLC

CERTIFICATE OF SERVICE

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

via U.S. District Court [LIVE]- Document Filing System, to all counsel of record, on this the 30th 

day of February 5, 2021.

/s/ James L. Etheridge

James L. Etheridge 

Case 6:20-cv-00542-ADA Document 43 Filed 02/05/21 Page 25 of 25