IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

WSOU INVESTMENTS, LLC D/B/A 

BRAZOS LICENSING AND 

DEVELOPMENT,

Plaintiff,

v. 

HUAWEI TECHNOLOGIES USA 

INC.; HUAWEI TECHNOLOGIES 

CO., LTD.,

Defendants.

§

§

§

§

§

§

§

§

§

§

CIVIL ACTION 6:20-cv-00533-ADA

CIVIL ACTION 6:20-cv-00535-ADA

CIVIL ACTION 6:20-cv-00540-ADA

CIVIL ACTION 6:20-cv-00543-ADA

PLAINTIFF’S REPLY CLAIM CONSTRUCTION BRIEF

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 1 of 26
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TABLE OF CONTENTS

I. U.S. Patent No. 6,882,627 (Case No. 6:20-cv-00533) Claim Terms...............................1

1. “performing a SRG (shared risk group) topology 

transformation of the network topology into a virtual topology 

that discourages the use of network resources” (Claims 1, 29, 

30) ................................................................................................................1

2. “second code means adapted to, for at least one shared risk 

group, determine ...” (Claim 29) / “means adapted to, for at 

least one shared risk group, determine ...” (Claim 30)..........................1

3. “third code means for performing a SRG (shared risk group) 

topology transformation ...” (Claim 29) / “means for 

performing a SRG (shared risk group) topology 

transformation ...” (Claim 30) .................................................................4

II. U.S. Patent No. 6,999,727 (Case No. 6:20-cv-00543) Disputed Claim Terms...............5

4. “a number of corrected errors (BCE) in a non-SCS base 

reference time period” (Claims 1, 4-7).....................................................5

5. “means for implementing a Performance Monitoring function 

based on data retrieved through a Forward Error Correction 

function” (Claims 4, 5)...............................................................................6

6. “means for classifying said blocks either as corrected or 

uncorrected through the Forward Error Correction function” 

(Claims 4, 5)................................................................................................8

7. “means for calculating the Performance Monitoring function 

by implementing a correlation of the information regarding 

said corrected and uncorrected blocks” (Claims 4, 5)............................9

8. “implementing a Performance Monitoring function based on 

data retrieved through a Forward Error Correction Function” 

(Claims 6, 7)..............................................................................................10

9. “classifying said blocks either as corrected or uncorrected 

through the Forward Error Correction function” (Claims 6, 7).........12

III. U.S. Patent No. 7,508,755 (Case No. 6:20-cv-00535) Disputed Claim Terms.............12

10. “originating network device” (Claims 1, 3)...........................................12

11. “switch over message” (Claims 1, 5, 8, 10, 13, 16, 18, 23, 25) ..............13

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 2 of 26
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12. “means for re-routing traffic traveling along the bi-directional 

LSP in the backwards direction...” (Claims 8, 23, 25)..........................14

13. “means for re-routing traffic traveling along a bi-directional 

LSP in a forward direction to an alternate path in the forward 

direction” (Claim 20)...............................................................................16

14. “means for transmitting a switch over message along the 

alternate path in the forward direction...” (Claims 20, 25).................17

15. “means for means for [sic] receiving traffic traveling along a 

bi-directional LSP in a forward direction to an alternate path 

in the forward direction” (Claim 23) .....................................................18

IV. U.S. Patent No. 8,417,112 (Case No. 6:20-cv-00540) Disputed Claim Terms.............19

16. “determining whether said collected BER values worsen over 

time” (Claims 1, 11) .................................................................................19

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 3 of 26
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TABLE OF AUTHORITIES

Cases

3M Innovative Properties Co. v. Tredegar Corp.,

725 F.3d 1315 (Fed. Cir. 2013)....................................................................................... 6, 14, 20

Amdocs (Israel) Limited v. Openet Telecom, Inc.,

2018 Markman 1699429, 2018 WL 1699429 (E.D. Va. 2018)................................................ 11

Astrazeneca AB v. Mut. Pharm. Co.,

384 F.3d 1333 (Fed. Cir. 2004)................................................................................................. 13

CLS Bank Int'l v. Alice Corp. Pty. Ltd.,

717 F.3d 1269 (Fed. Cir. 2013)............................................................................................. 2, 11

Computer Docking Station Corp. v. Dell, Inc.,

519 F.3d 1366 (Fed. Cir. 2008)....................................................................................... 6, 14, 20

Farstone Technology, Inc. v. Apple Inc.,

2015 Markman 857706, 2015 WL 857706 (C.D. Cal. 2015)..................................................... 3

Hill-Rom Servs., Inc. v. Stryker Corp.,

755 F.3d 1367 (Fed. Cir. 2014).......................................................................................... passim

In re Beauregard,

53 F.3d 1583 (Fed. Cir. 1995)............................................................................................... 2, 11

In re Katz Interactive Call Processing Patent Litig.,

639 F.3d 1303 (Fed.Cir. 2011).............................................................................................. 3, 19

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

248 F.3d 1303 (Fed. Cir. 2001)................................................................................................. 10

SkinMedica, Inc. v. Histogen Inc.,

727 F.3d 1187 (Fed.Cir.2013)..................................................................................................... 2

Typhoon Touch Technologies, Inc. v. Dell, Inc.,

659 F.3d 1376 (Fed. Cir. 2011).......................................................................................... passim

Virginia Innovation Sciences, Inc. v. Amazon.com, Inc.,

2019 Markman 4259020, 2019 WL 4259020 (E.D. Tex. 2019)............................................... 11

WhitServe LLC v. GoDaddy.Com, Inc.,

2014 WL 5668335 (D. Conn. 2014)......................................................................................... 11

Williamson v. Citrix Online, LLC,

792 F.3d 1339 (Fed. Cir. 2015)........................................................................................... 10, 11

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 4 of 26
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Winbond Elecs. Corp. v. Int'l Trade Comm'n,

4 F. App'x 832 (Fed. Cir. 2001)................................................................................................ 10

Statutes

35 U.S.C. § 112......................................................................................................................... 1, 12

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I. U.S. Patent No. 6,882,627 (Case No. 6:20-cv-00533) Claim Terms

1. “performing a SRG (shared risk group) topology transformation of 

the network topology into a virtual topology that discourages the use 

of network resources” (Claims 1, 29, 30)

WSOU’s Proposed Construction Defendants’ Proposed Construction

Plain and ordinary meaning “performing a transformation of links and/or 

nodes of a SRG (shared risk group) of the 

network into a virtual topology that 

discourages the use of network resources”

Defendants admit that the specification does not limit this term to “links and/or nodes.”

Resp. Br. at 2. The claim term itself expressly does not limit the scope of the claim to “links and/or 

nodes”; instead the claim language recites “network resources.” Indeed, that is exactly what is also 

expressly taught by the specification: “a network represented by a network topology representing 

an interconnected set of network resources.” ’627 patent, 2:11-13 (emphasis added). Defendants’ 

argument that giving this term its proper construction “would likely render the claims invalid for 

lack of written description” (Resp. Br. at 2) is speculative and unsupported. Defendants fail to 

make any such showing, and further, Defendants fail to show that a person of ordinary skill in the 

art would not understand how to “discourage the use of” other network resources as recited by the 

claims and specification. Instead, as the specification teaches, “[g]roups of network resources

which share common risks are referred herein as ‘shared risk groups.’” ’627 patent, 1:62-64 

(emphasis added). 

2. “second code means adapted to, for at least one shared risk group, 

determine ...” (Claim 29) / “means adapted to, for at least one shared 

risk group, determine ...” (Claim 30)

WSOU’s Proposed Construction Defendants’ Proposed Construction

Subject to 35 U.S.C. § 112, ¶6 

Function: determine if any of the at least one 

shared risk group includes any of the first 

sequence of network resources

Structure: processing platform-readable 

medium, and equivalents thereof (claim 29) / 

a network management platform, and 

equivalents thereof (claim 30)

Subject to 35 U.S.C. § 112, ¶6

Indefinite for failure to disclose sufficient 

structure

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 6 of 26
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Algorithm (if required): see e.g., 2:13-54, 

3:54-4:15, 4:45-5:33, 6:23-37, 6:52-7:52, 

9:18-23, 12:46-50 Figs. 3A, 3B, 6B, and 

equivalents thereof

Defendants’ proposal should be rejected.1 The correct corresponding structure is

“processing platform-readable medium, and equivalents thereof” for Claim 29 and “a network 

management platform, and equivalents thereof” for Claim 30. Defendants have failed to show that 

Claims 29 is anything other than a typical Beauregard claim. See CLS Bank Int'l v. Alice Corp. 

Pty. Ltd., 717 F.3d 1269, 1287 (Fed. Cir. 2013) (“named for In re Beauregard, 53 F.3d 1583 (Fed. 

Cir. 1995) ... [c]laims in Beauregard format formally recite a tangible article of manufacture—a 

computer-readable medium, such as a computer disk or other data storage device—but such claims 

also require the device to contain a computer program for directing a computer to carry out a 

specified process”). Additionally, Defendants’ reliance on Net MoneyIn is misplaced. Unlike in 

Net MoneyIn, the specification expressly recites that “[a]s known in the art, a network includes a 

set of processing sites generally referred to as stations or nodes...” (’627 patent, 1:13-14), and that 

a network management platform “would include any suitable combination of hardware and/or 

software.” (Id., 3:26-27). Thus, processing sites that include network management platforms were 

well known in the art. Similarly, Defendants’ reliance on Dr. Lavian’s testimony is unavailing. Dr. 

Lavian’s testimony is wholly conclusory and without any evidence or support. See Hill-Rom 

Servs., Inc. v. Stryker Corp., 755 F.3d 1367, 1385 (Fed. Cir. 2014) (“Beyond ambiguity, the 

expert's testimony is also conclusory. There is no documentary evidence—dictionary definition, 

paper, article, advertisement, product, system, method, etc.—to support his testimony. As such, 

the reasoning set forth in SkinMedica, Inc. v. Histogen Inc., 727 F.3d 1187 (Fed.Cir.2013) is 

applicable to this case. There we recognized that the evidentiary value of conclusory expert 

1 Additionally, Defendants filed a petition for inter partes review against this same ’627 patent in 

IPR2021-00222. In IPR2021-00222, Defendants proposed to the PTAB that these terms are 

not indefinite for failing to disclose structure, but instead, “includes the corresponding 

structure—algorithms for identifying shared risk groups of FIG. 3B and 6B—and equivalents 

thereof.” IPR2021-00222, Petition (Paper 2), at 16. Thus, Defendants have demonstrated that 

this term is not indefinite.

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 7 of 26
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testimony in the context of claim construction is suspect and unhelpful: Expert testimony, in 

particular, is less reliable because it ‘is generated at the time of and for the purpose of litigation 

and thus can suffer from bias that is not present in intrinsic evidence.’ For that reason, “conclusory, 

unsupported assertions by experts as to the definition of a claim term are not useful to a court.””). 

Finally, Defendants fail to explain why, for the term “third code means...” (below), Defendants 

agree to the corresponding structures of a processing platform-readable medium and a network 

management platform (albeit “comprising algorithms...”) but argue at the same time that there is 

no such corresponding structure for this term “second code means...”

Next, the Federal Circuit has held that functions like ‘processing,’ ‘receiving,’ and ‘storing’ 

do not require the disclosure of an algorithm. In re Katz Interactive Call Processing Patent Litig., 

639 F.3d 1303, 1315-16 (Fed.Cir. 2011). The same applies for “determin[ing].” See e.g. Farstone 

Technology, Inc. v. Apple Inc., 2015 Markman 857706, 2015 WL 857706, *7-*8 (C.D. Cal. 2015)

(finding that the “Selecting” is a common computer function and therefore requires no additional 

structure to be disclosed.); see also Typhoon Touch Technologies, Inc. v. Dell, Inc., 659 F.3d 1376, 

1384-86 (Fed. Cir. 2011) (holding that the determination whether a match exists to be sufficient 

textual description for a programmer of ordinary skill in the art as one of the steps in “means for 

cross-referencing,” and that “the matching of entered responses with a library of possible 

responses” to be one of known computer-implemented operations and are “readily implemented 

by persons of skill in computer programming.”). However, to the extent an algorithm is required,2

the claim language itself provides all the algorithm that is required. More specifically, the claim 

language directs that for a shared risk group (which are groups of network resources (’627 patent, 

1:62-64)), and a first sequence of network resources, determining if there are any of the first 

2 Defendants’ reliance on Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1352 (Fed. Cir. 

2015) (en banc) is misplaced. There the holding was not that a general purpose computer 

cannot be structure as Defendants imply; instead it is simply that in cases involving a claim 

limitation that is subject to § 112, ¶6 that must be implemented in a special purpose 

computer, the specification must disclose an algorithm in addition to a general purpose 

computer or microprocessor. Id.

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 8 of 26
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sequence of network resources matching the resources of the shared risk group. However, further 

exemplary algorithms disclosed in the specification are recited at ’627 patent, 2:13-54, 3:54-4:15, 

4:45-5:33, 6:23-37, 6:52-7:52, 9:18-23, 12:46-50 Figs. 3A, 3B, 6B, and equivalents thereof. For 

example, the specification teaches in an embodiment that once the shared risk groups are 

determined (e.g. ’627 patent, 6:23-37), each primary bi-directional link belonging to a shared risk 

group (SRG) under consideration is determined for transformation (e.g., Id., 6:63-66) (emphasis 

added). Again, as in the claim language, a determination is made as to whether a resource in a first 

sequence of network resources also belong (is a match to) a resource in a shared risk group. See

Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1384-86 (Fed. Cir. 2011) (holding that to 

satisfy the disclosure requirement of the statute, “the patent need only disclose sufficient structure 

for a person of skill in the field to provide an operative software program for the specified 

function”). Finally, Dr. Lavian’s testimony (¶¶ 62-72) is conclusory and unhelpful to the Court. 

Hill-Rom Servs., 755 F.3d at 1385.

3. “third code means for performing a SRG (shared risk group) topology 

transformation ...” (Claim 29) / “means for performing a SRG 

(shared risk group) topology transformation ...” (Claim 30)

WSOU’s Proposed Construction Defendants’ Proposed Construction

Subject to 35 U.S.C. § 112, ¶6 

Function: performing a SRG (shared risk 

group) topology transformation of the network 

topology into a virtual topology which 

discourages the use of network resources

Structure: processing platform-readable 

medium, and equivalents thereof (claim 29) / 

a network management platform, and 

equivalents thereof (claim 30)

Algorithm (if required): see e.g., 2:31-3:18, 

6:49-7:52, 7:63-8:28, 8:30-9:35, Figs. 2, 3A3D, 4A, 4B, 5A, 5B, 6A-6E, and equivalents 

thereof

Subject to 35 U.S.C. § 112, ¶6

Function: performing a SRG (shard risk 

group) topology transformation of the network 

topology into a virtual topology which 

discourages the use of network resources

Structure: A processing platform-readable 

medium comprising algorithms for link and 

node transformation such as those disclosed in 

Figures 3C, 3D, 4A, and 4B and the 

corresponding embodiments disclosed in 

6:49-7:52, and equivalents thereof (claim 29)

A network management platform comprising 

algorithms for link and node transformation 

such as those disclosed in Figures 3C, 3D, 4A, 

and 4B, and the corresponding embodiments 

disclosed in 6:49-7:52, and equivalents 

thereof (claim 30)

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 9 of 26
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Defendants have changed their position and now appear to agree with WSOU as to the 

corresponding structures of a processing platform-readable medium and a network management 

platform. Defendants argue that there is a dispute as to the corresponding structure. However,

Defendants’ new proposal recites the same structure as WSOU but also includes a recitation of 

algorithm. As discussed above in Section I.2, the corresponding structures were well known at the 

time of invention, but to the extent an algorithm is required, exemplary algorithms disclosed in the 

specification are recited at ’627 patent, 2:31-3:18, 6:49-7:52, 7:63-8:28, 8:30-9:35, Figs. 2, 3A3D, 4A, 4B, 5A, 5B, 6A-6E, and equivalents thereof. Defendants contrive various issues with all 

recitations of algorithm other than the ones at column 6 line 49 to column 7 line 52. See Resp. Br. 

at 10. However, Defendants’ arguments are conclusory and fail to show how the cited portions of 

the specification do not recite algorithms for performing a SRG topology transformation ... which 

discourages the use of network resources. Typhoon Touch., 659 F.3d at 1384-86.

II. U.S. Patent No. 6,999,727 (Case No. 6:20-cv-00543) Disputed Claim Terms

4. “a number of corrected errors (BCE) in a non-SCS base reference 

time period” (Claims 1, 4-7)3

WSOU’s Proposed Construction Defendants’ Proposed Construction

Plain and ordinary meaning “the number of background corrected errors 

that have been corrected within a base 

reference time period which is different than 

the base reference time period used to 

[calculate] detect uncorrected blocks”

This term should be given its plain and ordinary meaning. Defendants’ various

modifications to its original proposed construction is further evidence its proposed construction is 

confusing and unhelpful. The claim language expressly provides the definition of the claim term. 

Specifically, the term itself recites that it is a number of corrected errors that are in a non-SCS base 

reference time period. See ’727 patent, 5:34-35 (Claim 1), 6:21-22 (Claim 4), 6:45-46 (Claim 5), 

7:1-2 (Claim 6), 8:10-11 (Claim 7). The claims also provide a definition of SCS time period as “a 

defected base reference time period (SCS) or a time period where at least an uncorrected block 

3 Defendants no longer seek construction of the term “corrected errors.” Resp. Br. 11, n.8.

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 10 of 26
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(UB) has been detected.” See Id., 5:31-33 (Claim 1), 6:17-19 (Claim 4), 6:41-43 (Claim 5), 6:65-

67 (Claim 6), 8:7-9 (Claim 7). Thus, the term is expressly defined by the claim language.

Moreover, while Defendants appear to make a prosecution history disavowal argument 

(Resp. Br. at 13), Defendants fail to identify their argument as such, nor do Defendants support 

any such argument. See Computer Docking Station Corp. v. Dell, Inc., 519 F.3d 1366, 1375 (Fed. 

Cir. 2008) (“Prosecution disclaimer does not apply to an ambiguous disavowal.). “[I]n order for 

prosecution disclaimer to attach, the disavowal must be both clear and unmistakable.” 3M 

Innovative Properties Co. v. Tredegar Corp., 725 F.3d 1315, 1325 (Fed. Cir. 2013). And while it 

is unclear to WSOU how Defendants’ proposal of “different than” relates to their argument of 

“separate and distinct” (Resp. Br. at 13), here, not only do Defendants fail to make a showing 

under the exacting standards of disavowal, the prosecution history itself does not support any such 

disavowal. For example, not only have Defendants failed to analyze the entirety of its cited 

documents, but a quick review shows that even in the particular passage cited by Defendants there 

is no clear and unmistakable disclaimer. As Defendants quoted, the patentee argued that the steps 

disclosed in Cooper “are all based on the same sample window size.” Resp. Br. at 13 quoting id., 

Ex. 1 at 6. In other words, the patentee argues that Cooper’s disclosure is all based on the same 

window size, and there is nothing to suggest that windows must be “separate and distinct.” There

is no support for the exacting standards of prosecution history disavowal. Finally, to the extent a 

“non-SCS base reference time period” were to be re-phrased (and it should not), the specification 

provides a much clearer re-wording in an example of a “non SCS second,” which the specification 

provides as “namely, a [time period] at low frequency of errors, wherein the errors can be 

corrected.” Id., 3:9-11. 

5. “means for implementing a Performance Monitoring function based 

on data retrieved through a Forward Error Correction function”

(Claims 4, 5)

WSOU’s Proposed Construction Defendants’ Proposed Construction

Subject to 35 U.S.C. § 112, ¶6 

Function: implementing a Performance 

Monitoring function based on data retrieved 

Subject to 35 U.S.C. § 112, ¶6

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 11 of 26
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through a Forward Error Correction function

Structure: telecommunication network 

management system, and equivalents thereof

Algorithm (if required): see e.g., 1:63-2:21, 

2:36-4:54, Fig. 1, and equivalents thereof

Function: implementing a Performance 

Monitoring function based on data retrieved 

through a Forward Error Correction function

Structure: Algorithm disclosed in Figure 1, and

equivalents thereof

The correct corresponding structure is “telecommunication network management 

system, and equivalents thereof.” See e.g., ’727 patent, 5:66-67 (Claim 4), 6:23-24 (Claim 5); see 

also Id., 2:10-16. Defendants argue that the above cannot be the corresponding structure because 

of “reasons explained ... with regard to the ’627 patent” (Resp. Br. at 14-15), but Defendants 

provide no analysis, much less any analysis applied to the ’727 patent. Regardless, the specification 

teaches that there already existed communications systems, including communication systems 

having a Forward Error Correction (FEC) mechanism. ’727 patent, 1:17-59. The specification also 

teaches that Performance Monitoring (PM) procedures were also known. Id., 1:42-52. And the 

specification recites that the object of the invention is to provide a specific implementation for a 

Performing Monitoring function. Id., 1:63-2:25. Similarly, the specification also recites that the 

described calculations “are carried out in the network elements of the telecom network, inserting 

them as hardware or software procedures that are additional to the PM ones which are already 

generally provided and known to the man skilled in the art.” Id., 4:39-44 (emphasis added). 

Thus, as the specification shows, telecommunication network management systems implementing 

Performance Monitoring systems were known in the art. Moreover, the specification goes on to 

teach that the invention can also be implemented on software and computer readable medium run 

on a computer. Id., 4:65-5:8.4 To the extent an algorithm is required, exemplary algorithms 

disclosed in the specifications are recited at ’727 patent, 1:63-2:21, 2:36-4:54, Fig. 1, and 

equivalents thereof. Defendants complain that the passage at 1:63-2:21 “generically copies the 

claim language” (Resp. Br. at 15, n.11), but Defendants fail to provide any analysis for its 

4 Defendants’ reliance on Williamson for the proposition that a general-purpose computer cannot 

be structure is misplaced. See n.2, above. This applies to all instances where Defendants 

make such an argument.

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conclusion. To the contrary, the passage at-issue recites implementing a PM function that 

correlates “corrected” and “uncorrected” information blocks, and also states that the invention is 

“better described in the claims, which form an integral part with the present description.” Id., 2:10-

16. In addition to Claims 4 and 5 themselves, at least Claim 1 recites “a method for implementing 

a Performance Monitoring function...,” which includes making certain calculations comprising 

the calculations of a Performance Monitoring function. See Id. 5:17-35. Furthermore, the 

specification also teaches obtaining certain values from a FEC end function (such as CEC, UBC, 

and DS), and based on those FEC values, determining certain other values (such as BCE and SCS), 

and determining a summation of values of BCE and SCS events, and correlating the information 

regarding corrected blocks and uncorrected blocks. See 2:36-4:54, Fig. 1. 

6. “means for classifying said blocks either as corrected or uncorrected 

through the Forward Error Correction function” (Claims 4, 5)

WSOU’s Proposed Construction Defendants’ Proposed Construction

Subject to 35 U.S.C. § 112, ¶6 

Function: classifying said blocks either as 

corrected or uncorrected through the Forward 

Error Correction function

Structure: network node performing Forward 

Error Correction function, and equivalents 

thereof

Subject to 35 U.S.C. § 112, ¶6

Indefinite for lack of structure.

The correct recited function is “classifying said blocks either as corrected or uncorrected 

through the Forward Error Correction function.” The correct corresponding structure is

“network node performing Forward Error Correction function, and equivalents thereof.” See e.g., 

’727 patent, 2:45-65 (“[t]he following primitives can be obtained from a FEC end function, 

performed in the network node: [listing CEC, corrected errors; UBC, uncorrected blocks; DS: 

defect second]”). As the specification recites, the Forward Error Correction mechanism was known 

in the field (Id., 1:22-24), and the primitives are obtained through the FEC end function. Id., 2:45-

65. In other words, it is the Forward Error Correction function that performs the classifying thus 

making the primitives (the result of the classifying) available to be obtained. Finally, the Sharma 

Declaration’s testimony (¶¶ 62-72) is conclusory, without any evidence or analysis for support,

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 13 of 26
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and should not be given any weight. Hill-Rom Servs., 755 F.3d at 1385. In particular the Sharma 

Declaration does not provide any analysis of the FEC function itself and does not provide any 

evidence or analysis why it is not the FEC function that performs the recited classifying.

7. “means for calculating the Performance Monitoring function by 

implementing a correlation of the information regarding said 

corrected and uncorrected blocks” (Claims 4, 5)

WSOU’s Proposed Construction Defendants’ Proposed Construction

Subject to 35 U.S.C. § 112, ¶6 

Function: calculating the Performance 

Monitoring function by implementing a 

correlation of the information regarding said 

corrected and uncorrected blocks

Structure: telecommunication network 

management system, and equivalents thereof

Algorithm (if required): see e.g., 1:63-2:21, 

2:36-4:54, Fig. 1, and equivalents thereof

Subject to 35 U.S.C. § 112, ¶6

Function: [] calculating the Performance 

Monitoring function by implementing a 

correlation of the information regarding said 

corrected and uncorrected blocks

Structure: Algorithmic structure:

, and 

equivalents thereof

The correct corresponding structure is “telecommunication network management 

system, and equivalents thereof.” Defendants argue that the above cannot be the corresponding 

structure because of “reasons explained ... with regard to the ’627 patent” (Resp. Br. at 19), but 

Defendants provide no analysis, much less any analysis applied to the ’727 patent. Regardless, the 

specification teaches that there already existed communications systems, including 

communication systems having a Forward Error Correction (FEC) mechanism. ’727 patent, 1:17-

59. And the specification teaches that Performance Monitoring (PM) procedures were also known. 

Id., 1:42-52. And the specification recites that the object of the invention is to provide a specific 

implementation for a Performing Monitoring function. Id., 1:63-2:25. Similarly, the specification 

also recites that the described calculations “are carried out in the network elements of the telecom 

network, inserting them as hardware or software procedures that are additional to the PM ones

which are already generally provided and known to the man skilled in the art.” Id., 4:39-44 

(emphasis added). Thus, as the specification shows, telecommunication network management 

systems implementing Performance Monitoring systems were known in the art. Moreover, the 

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 14 of 26
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specification goes on to teach that the invention can also be implemented on software and computer 

readable medium run on a computer. Id., 4:65-5:8.5 To the extent an algorithm is required, 

exemplary algorithms disclosed in the specification are recited at ’727 patent, 1:63-2:21, 2:36-

4:54, Fig. 1, and equivalents thereof. For example, the specification teaches obtaining certain 

values from a FEC end function (such as CEC, UBC, and DS), based on those FEC values, 

determining certain other values (such as BCE and SCS), determining a summation of values of 

BCE and SCS events, and correlating the information regarding corrected blocks and uncorrected 

blocks. See e.g., 2:36-4:54, Fig. 1. Defendants’ complaints about Figure 1 are misplaced. As the 

specification teaches, the events BCE and SCS “have been defined for the determination of the 

performance monitoring PM based on the FEC” (Id., 3:4-6), and Figure 1 illustrates at least how 

to calculate the summation of BCE and SCS. Next, Defendants provide no authority to support 

their contention that the same structure cannot perform two functions. To the contrary, the Federal 

Circuit has long recognized that a single structure may perform multiple functions. See Medtronic, 

Inc. v. Advanced Cardiovascular Sys., Inc., 248 F.3d 1303, 1313 (Fed. Cir. 2001) (noting that it is 

a "truism" that a single structure may perform two functions); see also Winbond 

Elecs. Corp. v. Int'l Trade Comm'n, 4 F. App'x 832, 839-40 (Fed. Cir. 2001) (“a single structure, 

such as a decoder or a buffer, may support two different claim limitations”).

8. “implementing a Performance Monitoring function based on data 

retrieved through a Forward Error Correction Function” (Claims 6, 

7)

WSOU’s Proposed Construction Defendants’ Proposed Construction

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

Function: implementing a Performance 

Monitoring function based on data retrieved 

through a Forward Error Correction function

Structure: Algorithm disclosed in Figure 1, 

and equivalents thereof.

Because this term does not contain the words “means for,” there is a rebuttable presumption 

5 Defendants’ reliance on Williamson for the proposition that a general-purpose computer cannot 

be structure is misplaced. See n.2, above. 

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 15 of 26
11

that section 112, paragraph 6, does not apply to that limitation. Williamson v. Citrix Online, LLC, 

792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). Here, the claim language refers to structure, given 

that the preamble of Claims 6 and 7 recite “a computer program having a program code... when 

said program is run on a computer...” (’727 patent, 6:47-49 (Claim 6)) and “a computer readable 

medium having recorded thereon a computer code...adapted to enable a computer to perform the 

steps comprising...” (7:3-5 (Claim 7)). The term “program code” of Claim 6 is not a nonce word 

and connects specific structure. See e.g., Virginia Innovation Sciences, Inc. v. Amazon.com, Inc., 

2019 Markman 4259020, 2019 WL 4259020, *30-*32 (E.D. Tex. 2019) (term "program code" 

was not a nonce word but connoted specific structure to avoid means-plus-function treatment); 

WhitServe LLC v. GoDaddy.Com, Inc., 2014 WL 5668335, *3-*4 (D. Conn. 2014) (ruling that 

claim limitation “software executing on said computer” was not a means-plus-function limitation); 

Amdocs (Israel) Limited v. Openet Telecom, Inc., 2018 Markman 1699429, 2018 WL 1699429, 

*16-*18 (E.D. Va. 2018) (term in limitations reciting “computer code” was not a means-plusfunction limitation). Defendants’ contention that “WSOU relies upon cases decided prior to the 

Williamson decision” (Resp. Br. at 21) ignores the other, post-Williamson cases that are cited. 

Defendants’ complaint in a footnote that the claim here provides structure (the computer) in the 

preamble and not the claim body is curious at least because Defendants provide no authority for 

their implication that structure recited in the preamble, followed by detail of the instructions, is 

ignored. Defendants’ reliance on Rain Computer, Inc., Case No. 20-1646, Dkt. No. 45, is 

misplaced. Rain Computer does not stand for the proposition that a general-purpose computer is 

not structure for the purposes of overcoming Williamson. Instead, at the portion cited by 

Defendants, it was already determined that the term-at-issue was a means-plus-function term, and 

the Court was looking to the specification for the corresponding structure (and algorithm). Id., at 

7-9. Rain Computer is inapposite as to whether a computer is sufficient structure to prevent the 

application of § 112, ¶6 for a term that does not recite “means” in the first place. 

Claim 7 is written in a Beauregard claim format. See CLS Bank, 717 F.3d at 1287 “named 

for In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995) . . . [c]laims in Beauregard format formally 

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 16 of 26
12

recite a tangible article of manufacture—a computer-readable medium, such as a computer disk or 

other data storage device—but such claims also require the device to contain a computer program 

for directing a computer to carry out a specified process”). Tellingly, Defendants provide no 

arguments on why Claim 7 is not a tangible article of manufacture. It is also telling that 

Defendants’ expert does not provide any opinion (conclusory or otherwise) as to whether a person 

of ordinary skill would understand a computer and computer readable medium, in the context of 

the specification, to denote structure. Instead, Defendants’ expert only opines on how to proceed 

“[s]hould the Court find these claim limitations are subject to 35 U.S.C. § 112, ¶6.” Resp. Br. at 

22 citing Sharma Decl., ¶ 38. Accordingly, this term is not subject to 35 U.S.C. § 112, ¶6, but to 

the extent the Court deems that the presumption is overcome, this term should be construed the 

same way as the analogous claim term discussed in Section II.5, above. 

9. “classifying said blocks either as corrected or uncorrected through the 

Forward Error Correction function” (Claims 6, 7)

WSOU’s Proposed Construction Defendants’ Proposed Construction

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

Indefinite for lack of structure.

Because this term does not contain the words “means for,” there is a rebuttable presumption 

that section 112, paragraph 6, does not apply to that limitation. Here, the presumption is not 

overcome and the claim language refers to structure for the same reasons discussed in Section II.8, 

above. To the extent the Court deems that the presumption is overcome, this term should be 

construed the same way as the analogous claim term discussed in Section II.6, above.

III. U.S. Patent No. 7,508,755 (Case No. 6:20-cv-00535) Disputed Claim Terms

10. “originating network device” (Claims 1, 3)

WSOU’s Proposed Construction Defendants’ Proposed Construction

Plain and ordinary meaning “a network device of a primary LSP which is 

not a source network device of the same 

primary LSP”

The claim language itself provides a definition of this term. Specifically, an “originating 

network device” is operable to re-route traffic along a bi-directional LSP in a forward direction to 

an alternate path...” and “transmit a switch over message...” ’755 patent, 4:12-20. The 

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 17 of 26
13

specification discloses the same. See Id., 1:51-57. Defendants argue that the claim language recites

what the device does, but not what it is (Resp. Br. at 23, n.18), but even Defendants’ own 

parenthetical shows that is a false distinction. It is a network device that does what is recited by 

the claim language. Additionally, Defendants’ proposed construction is confusing and unhelpful 

as there is no requirement for “a primary LSP” anywhere in the claim language; instead the claims 

only require “a bi-directional LSP” and an “alternate path.” Moreover, Defendants’ proposed 

construction is improper for attempting to import limitations from the specification into the claim 

language. For example, Defendants seek to require that the term cannot be “a source network 

device,” support for which Defendants point to the disclosure regarding the embodiment depicted 

by Figure 2. But that particular embodiment explains, “[t]his is so, because bi-directional Fast Rerouting uses some of the functionality of traditional MPLS Fast Re-routing which does not function 

at a source network device.” ’755 patent, 3:1-3. However, the specification expressly understood 

that it could only describe “so-called existing MPLS Fast Re-routing techniques.” Id., 1:15-17

(emphasis added). Further, Defendants fail to show any disavowal where the scope of the invention 

is clearly stated and is described as an advantage and distinction of the invention to limit the claims

in the way Defendants propose. Astrazeneca AB v. Mut. Pharm. Co., 384 F.3d 1333, 1339-40 (Fed. 

Cir. 2004) (Where the general summary of the invention describes a feature of the invention and 

criticizes other products “that lack the same features, this operates as a clear disavowal of these 

other products”) (emphasis added). 

11. “switch over message” (Claims 1, 5, 8, 10, 13, 16, 18, 23, 25)

WSOU’s Proposed Construction Defendants’ Proposed Construction

Plain and ordinary meaning “a message which instructs a device to 

perform a switch over to the alternate path and 

which is not a message that indicates a fault 

has occurred in the network”

Defendants’ proposed construction at best attempts to re-phrase the claim language, which 

is unnecessary, but also attempts to add a negative limitation that the term “is not a message that 

indicates a fault has occurred in the network.” However, this negative limitation does not clarify 

“switch over message,” and instead it amounts to an attempt of improper importation of a limitation 

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 18 of 26
14

from the specification. Indeed, the word “fault” doesn’t appear anywhere in the patent, and to the 

extent the negative limitation can be understood, it is unclear how a switch over message would 

be completely exclusive of also being a message that indicates a fault in the network. Defendants’ 

arguments as to prosecution history disavowal are also misplaced. “Prosecution disclaimer does 

not apply to an ambiguous disavowal.” Dell, 519 F.3d at 1375. “[I]n order for prosecution 

disclaimer to attach, the disavowal must be both clear and unmistakable.” 3M, 725 F.3d at 1325. 

None of Defendants’ citations to the prosecution history constitute a clear and unmistakable 

disclaimer that the switch over message cannot also indicate a fault. Instead, in each, the applicant 

merely states that the reference’s (Carpini) “fault indication” message is not a switch over message 

because Carpini’s message does not re-route traffic along an alternative, bi-directional LSP in a 

backwards direction. See Resp. Br. Ex. 3, at 10, Ex. 4, at 9-10, Ex. 5 at 10-11. In fact, as 

Defendants’ Exhibit 5 shows, the applicant does not take issue with Carpini’s “fault indication” 

message for possibly performing both indicating a fault and allegedly being a switch over message 

for “re-routing” and “diverting” data; instead the applicant only states that Carpini is “completely 

silent with respect to the use of a switch over message to re-route data along a bidirectional LSP 

in a backward direction to an alternate path.” Resp. Br., Ex. 5, at 11. Thus, there is no clear and 

unmistakable disavowal. 

12. “means for re-routing traffic traveling along the bi-directional LSP in 

the backwards direction...” (Claims 8, 23, 25)

WSOU’s Proposed Construction Defendants’ Proposed Construction

Subject to 35 U.S.C. § 112, ¶6

Function: 

Claim 8: re-routing traffic traveling along the 

bi-directional LSP in the backwards direction 

to the alternate path in the backwards 

direction based on the switch over message; 

Claim 23: re-routing traffic traveling along a 

bi-directional LSP in a backwards direction to 

an alternate path in the backwards direction 

based on the switch over message;

Claim 25: re-routing traffic traveling along the 

bi-directional LSP in a backwards direction to 

the same alternate path in the backwards 

Subject to 35 U.S.C. § 112, ¶6

Indefinite for failure to disclose sufficient 

structure.

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 19 of 26
15

direction based on the switch over message

Structure: merging network device, and 

equivalents thereof

Algorithm (if required): see e.g., 2:7-32, 2:43-

60, 3:13-36, Figs. 1, 2, 3

The correct corresponding structure is “merging network device, and equivalents 

thereof.” See e.g., ’755 patent, 4:44-45, 6:20, 2:19-25, 2:52-60, 3:13-16. Defendants argue that the 

above cannot be the corresponding structure because of “reasons explained ... with regard to the 

’627 patent” (Resp. Br. at 29), but Defendants provide no analysis, much less any analysis applied 

to the ’755 patent. Regardless, the specification recites that merging network device is network 

device 140 and performs the recited functions. See e.g., ’755 patent, 2:19-26, 2:51-52, 3:17-28.

Further, the specification teaches that a merging network device could be a control processing 

section, and the control processing section can also perform the recited functions. Id., 3:17-28. The 

specification also teaches that the control processing section may be hardware, software, firmware, 

or some combination. Id., 3:37-40. 6 To the extent an algorithm is required, the claim language 

itself sets out an algorithm, and further exemplary algorithms disclosed in the specification are 

recited at Id., 2:7-32, 2:43-60, 3:13-36, Figs. 1, 2, 3, and equivalents thereof. For example, the 

specification teaches a merging network device receiving a switch over message having an 

alternate path that may be predetermined, and based on the switch over message, the merging 

network device creates an alternate path in the backward direction using the same network 

elements and switches backward flowing traffic to the alternate path. Id. Defendants contrive 

various issues with two recitations of algorithm cited by WSOU. See Resp. Br. at 29-30. However, 

Defendants’ arguments are conclusory.7 Typhoon Touch., 659 F.3d at 1384-86. For all “other 

6 Defendants’ reliance on Williamson for the proposition that a general-purpose computer cannot 

be structure is misplaced. See n.2, above. This applies to all instances where Defendants 

make such an argument. 

7 Additionally, Defendants’ complaints regarding the passage at “2:43-60” is misplaced, this 

passage shows that the switch over message is received by the merging network device, 

which then performs the recited functions.

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 20 of 26
16

citations,” Defendants provide only a mere string cite to fourteen paragraphs in Dr. Lavian’s 

testimony, ostensibly as a way to get around the agreed-upon briefing page limits. Regardless, Dr. 

Lavian’s testimony (¶¶ 74-87) is conclusory and unhelpful to the Court. Hill-Rom Servs., 755 F.3d 

at 1385.

13. “means for re-routing traffic traveling along a bi-directional LSP in a 

forward direction to an alternate path in the forward direction” 

(Claim 20)

WSOU’s Proposed Construction Defendants’ Proposed Construction

Subject to 35 U.S.C. § 112, ¶6

Function: re-routing traffic traveling along a 

bi-directional LSP in a forward direction to an 

alternate path in the forward direction

Structure: originating network device, and 

equivalents thereof

Algorithm (if required): see e.g., 1:51-56, 2:7-

32, 2:43-60, Figs. 1, 2, 3

Subject to 35 U.S.C. § 112, ¶6

Indefinite for failure to disclose sufficient 

structure.

The correct corresponding structure is “originating network device, and equivalents 

thereof.” See e.g., ’755 patent, 6:1-2, 1:51-56, 2:7-32, 2:43-60. Defendants argue that the above 

cannot be the corresponding structure because of “reasons explained in [sections discussing other 

patents]” (Resp. Br. at 30), but Defendants provide no analysis, much less any analysis applied to 

the ’755 patent. Regardless, the specification recites that upon detection of a failure, “network 

device 120 takes on the role of an ‘originating’ network device. See e.g., ’755 patent, 2:14-15. 

Further, the specification teaches that an originating network device (network device 120) could 

be a control processing section, and the control processing section can also perform the recited 

functions. Id., 2:11-19, 2:35-60. The specification also teaches that the control processing section 

may be hardware, software, firmware, or some combination. Id., 2:35-39. To the extent an 

algorithm is required, the claim language itself sets out an algorithm, and further exemplary 

algorithms disclosed in the specification are recited at Id., 1:51-56, 2:7-32, 2:43-60, Figs. 1, 2, 3, 

and equivalents thereof. For example, the specification teaches an originating network device 

determining an alternate path or using a stored predetermined alternate path, then sending a switch 

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 21 of 26
17

over message along the alternate path to the merging network device, and then performing a switch 

over so that traffic flowing in the forward direction can travel along the alternate path. Id.

Defendants contrive issues with one recitation of algorithm cited by WSOU. See Resp. Br. at 29-

30. However, Defendants’ arguments are conclusory.8 Typhoon Touch., 659 F.3d at 1384-86. For 

all “other citations,” Defendants provide only a mere string cite to another fourteen paragraphs in 

Dr. Lavian’s testimony, again, ostensibly as end-around to the briefing page limits. Regardless, 

Dr. Lavian’s testimony (¶¶ 88-101) is conclusory and unhelpful to the Court. Hill-Rom Servs., 755 

F.3d at 1385.

14. “means for transmitting a switch over message along the alternate 

path in the forward direction...” (Claims 20, 25)

WSOU’s Proposed Construction Defendants’ Proposed Construction

Subject to 35 U.S.C. § 112, ¶6

Function: 

Claim 20: transmitting a switch over message 

along the alternate path in the forward 

direction to a merging network device 

responsive for re-routing traffic traveling 

along the bi-directional LSP in a backward 

direction to the alternate path in the backward 

direction; 

Claim 25: transmitting a switch over message, 

along the alternate path in the forward 

direction, for re-routing traffic traveling along 

the bi-directional LSP in a backward 

direction”

Structure: originating network device, and 

equivalents thereof

Algorithm (if required): see e.g., 1:51-56, 2:7-

32, 2:43-60, 3:9-36, Figs. 1, 2, 3

Subject to 35 U.S.C. § 112, ¶6

Indefinite for failure to disclose sufficient 

structure.

The correct corresponding structure is “originating network device, and equivalents 

thereof.” See e.g., ’755 patent, 6:1-2, 1:51-56, 2:7-32, 2:43-60. Defendants argue that the above 

8 Additionally, Defendants’ complaints regarding the passage at “2:43-60” is misplaced. This 

passage shows that the switch over message is received by the merging network device, 

which then performs the recited functions.

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 22 of 26
18

cannot be the corresponding structure because “[a]s explained above with regard to the ’627 

patent...” (Resp. Br. at 32), but Defendants provide no analysis, much less any analysis applied to 

the ’755 patent. Regardless, the specification recites that upon detection of a failure, “network 

device 120 takes on the role of an ‘originating’ network device. See e.g., ’755 patent, 2:14-15. 

Further, the specification teaches that an originating network device (network device 120) could 

be a control processing section, and the control processing section can also perform the recited 

functions. Id., 2:11-19, 2:35-60. The specification also teaches that the control processing section 

may be hardware, software, firmware, or some combination. Id., 2:35-39. To the extent an 

algorithm is required, the claim language itself sets out an algorithm, and further exemplary 

algorithms disclosed in the specification are recited at Id., 1:51-56, 2:7-32, 2:43-60, 3:9-36, Figs. 

1, 2, 3, and equivalents thereof. For example, the specification teaches an originating network 

device determining an alternate path or using a stored predetermined alternate path and sending a 

switch over message along the alternate path to the merging network device. Based on the switch 

over message, the merging network device creates an alternate path in the backward direction using 

the same network elements and switches backward flowing traffic to the alternate path. Id.

Defendants contrive issues with two recitations of algorithm cited by WSOU. See Resp. Br. at 33. 

However, Defendants’ arguments are conclusory. Typhoon Touch., 659 F.3d at 1384-86. For all 

“other citations,” Defendants provide only a mere string cite to another sixteen paragraphs in Dr. 

Lavian’s testimony, again, ostensibly as end-around to the briefing page limits. Regardless, Dr. 

Lavian’s testimony (¶¶ 102-117) is conclusory and unhelpful to the Court. Hill-Rom Servs., 755 

F.3d at 1385.

15. “means for means for [sic] receiving traffic traveling along a bidirectional LSP in a forward direction to an alternate path in the 

forward direction” (Claim 23)

WSOU’s Proposed Construction Defendants’ Proposed Construction

Subject to 35 U.S.C. § 112, ¶6

Function: receiving traffic traveling along a 

bi-directional LSP in a forward direction to an 

alternate path in the forward direction

Subject to 35 U.S.C. § 112, ¶6

Indefinite for failure to disclose sufficient 

structure.

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 23 of 26
19

Structure: merging network device, and 

equivalents thereof

Algorithm (if required): see e.g., 2:7-32, 2:43-

60, 3:13-36, Figs. 1, 2, 3

The correct corresponding structure is “merging network device, and equivalents 

thereof.” See e.g., ’755 patent, 6:20, 2:7-32, 2:43-60, 3:13-36. Defendants argue that the above 

cannot be the corresponding structure because “[a]s explained above with regard to the ’627 

patent...” (Resp. Br. at 32), but Defendants provide no analysis, much less any analysis applied to 

the ’755 patent. Regardless, the specification recites that merging network device is network 

device 140 and performs the recited functions. See e.g., ’755 patent, 2:19-26, 2:51-52, 3:17-28.

Further, the specification teaches that a merging network device could be a control processing 

section, and the control processing section can also perform the recited functions. Id., 3:17-28. The 

specification also teaches that the control processing section may be hardware, software, firmware, 

or some combination. Id., 3:37-40. To the extent an algorithm is required, 9 the claim language 

itself sets out an algorithm, and further exemplary algorithms disclosed in the specification are 

recited at Id., 2:7-32, 2:43-60, 3:13-36, Figs. 1, 2, 3, and equivalents thereof. For example, the 

specification teaches a merging network device receiving a switch over message in the forward 

direction via an alternate path after a failure is detected. Id. Defendants contrive issues with two 

recitations of algorithm cited by WSOU. See Resp. Br. at 34. However, Defendants’ arguments 

are conclusory. Typhoon Touch., 659 F.3d at 1384-86. For all “other citations,” Defendants provide 

only a mere string cite to another eight paragraphs in Dr. Lavian’s testimony, again, ostensibly as 

end-around to the briefing page limits. Regardless, Dr. Lavian’s testimony (¶¶ 125-132) is 

conclusory and unhelpful to the Court. Hill-Rom Servs., 755 F.3d at 1385.

IV. U.S. Patent No. 8,417,112 (Case No. 6:20-cv-00540) Disputed Claim Terms

16. “determining whether said collected BER values worsen over time” 

(Claims 1, 11)

9 The Federal Circuit has held that for functions such as “receiving,” no algorithm is required. In 

re Katz Interactive Call Proc. Patent, 639 F.3d 1303, 1316 (Fed. Cir. 2011).

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 24 of 26
20

WSOU’s Proposed Construction Defendants’ Proposed Construction

Plain and ordinary meaning “determining whether said collected BER values 

worsen over time by comparing one or more of 

said recent ones of said collected BER values with 

said other collected BER values”

The claim language itself provides a definition of this term. Defendants’ additional 

recitation in their proposal is confusing, as it simply states that some value(s) should be compared 

with other value(s), but that concept is already included in the term itself. Defendants argue that 

Defendants’ proposed construction includes “the recent ones of said collected BER values” as an 

additional requirement not reflected in the term (Resp. Br. at 39), but Defendants fail to 

acknowledge the full context of the claim language. Indeed, the “recent ones of said collected BER 

values” is fully accounted for in prior claim elements and in this term reciting “said collected Ber 

values.” See e.g. ’112 patent, 9:51-61 (claim 1), 11:29-39 (claim 11). Moreover, it is unclear how 

comparing merely one recent value can show the BER values “worsen over time.” Defendants’ 

attempt to explain this only highlights the confused nature of Defendants’ proposal. Defendants’ 

arguments as to prosecution history disavowal are also misplaced. “Prosecution disclaimer does 

not apply to an ambiguous disavowal.” Dell, 519 F.3d at 1375. “[I]n order for prosecution 

disclaimer to attach, the disavowal must be both clear and unmistakable.” 3M, 725 F.3d at 1325.

None of Defendants’ citations to the prosecution history constitute a clear and unmistakable 

disclaimer of “plain and ordinary meaning” (Resp. Br. at 38). Instead, the applicant disagreed with 

the Examiner’s reading of Vieregge. See e.g., Resp. Br., Ex. 9, at 17 (“Appellant submits that the 

Examiner’s conclusions regarding the teachings of Vieregge do not comport with the teachings of 

Vieregge.”). The applicant noted that Vieregge’s use of one BER value (the latest) and a rate of 

increase between two consecutive measurements is not the same as determining whether said 

collected BER values worsen over time. Id, at 16-17. Defendants’ reproduced portions of the 

prosecution history merely provide exemplary embodiments and descriptions of the invention, 

thus, there is no clear and unmistakable disavowal.

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 25 of 26
21

Dated: March 19, 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 

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 

Jhuang@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 March 19, 

2021.

/s/ James L. Etheridge

James L. Etheridge 

Case 6:20-cv-00533-ADA Document 47 Filed 03/19/21 Page 26 of 26