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.

§

§

§

§

§

§

§

§

§

§

§

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-00534-ADA Document 49 Filed 03/19/21 Page 1 of 23
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Table of Contents

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

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

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

Abbreviations............................................................................................................................... vi

I. U.S. Patent No. 7,872,973 (Case No. 6:20-cv-00538).......................................................1

A. “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).......................................................................................................1

B. “the message” (claims 1 and 9).............................................................................3

C. “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)......................................................................................5

D. “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) ......................5

E. “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)...................................................................................................................5

1. Huawei has failed to rebut the presumption against 35 U.S.C. 

§112, ¶6 .......................................................................................................5

2. Should the Court apply 35 U.S.C. §112, ¶6, the specification 

discloses corresponding structure and algorithms..................................7

II. U.S. Patent No. 8,249,446 (Case No. 6:20-cv-00542).......................................................9

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

[optical network component comprising an optical transmitter / 

optical transmission device]” (claims 1 and 15)..................................................9

1. The invention is not limited to “subscriber based” 

components/devices....................................................................................9

Case 6:20-cv-00534-ADA Document 49 Filed 03/19/21 Page 2 of 23
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2. The Court should not condone Huawei taking inconsistent 

claim constructions before this Court and the PTAB on the 

same patent...............................................................................................11

B. “output indicator” (claims 1 and 15)..................................................................12

C. “output threshold” (claim 1) / “output indicator threshold” (claim 15).........14

Case 6:20-cv-00534-ADA Document 49 Filed 03/19/21 Page 3 of 23
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Table of Authorities

Cases

CloudofChange, LLC v. NCR Corp.,

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

Cont’l Circuits LLC v. Intel Corp.,

915 F.3d 797 (Fed. Cir.)............................................................................................................ 10

Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc.,

424 F.3d 1293 (Fed.Cir.2005)..................................................................................................... 4

EON Corp. IP Holdings LLC v. AT & T Mobility LLC,

785 F.3d 616 (Fed. Cir. 2015)..................................................................................................... 8

Konami Corp. v. Roxor Games, Inc.,

445 F. Supp. 2d 725 (E.D. Tex. 2006)........................................................................................ 4

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

453 F.3d 1364 (Fed. Cir. 2006)................................................................................................... 7

Liebe-Flarsheim Co. v. Medrad, Inc.,

358 F.3d 898 (Fed. Cir. 2004)..................................................................................................... 2

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

572 U.S. 898 (2014)................................................................................................................ 3, 4

O2 Micro Int’l Ltd. v. Beyond Innov. Tech. Co.,

521 F.3ed 1351 (Fed. Cir. 2008)................................................................................................. 2

OrthoPediatrics Corp. v. K2M, Inc.,

Case IPR 2018-01546, Paper 10 (P.T.A.B. Feb. 14, 2019) .................................... 11, 12, 14, 15

Phillips v. AWH Corp.,

415 F.3d 1303 (Fed. Cir. 2005)................................................................................................. 11

Sonix Tech. Co., Ltd. v. Publications Int'l, Ltd.,

844 F.3d 1370 (Fed. Cir. 2017)................................................................................................... 5

SRI Int'l v. Matsushita Elec. Corp. of Am.,

775 F.2d 1107 (Fed.Cir.1985)..................................................................................................... 2

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

988 F.2d 1165 (Fed. Cir. 1993)................................................................................................... 9

Thorner v. Sony Computer Entm't Am. LLC,

669 F.3d 1362 (Fed. Cir. 2012)......................................................................................... 1, 2, 15

Case 6:20-cv-00534-ADA Document 49 Filed 03/19/21 Page 4 of 23
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Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp.,

587 F.3d 1339 (Fed. Cir. 2009)................................................................................................... 3

Williamson v. Citrix Online, LLC,

792 F.3d 1339 (Fed. Cir. 2015)............................................................................................... 6, 7

Statutes

35 U.S.C. §112................................................................................................................................ 7

Case 6:20-cv-00534-ADA Document 49 Filed 03/19/21 Page 5 of 23
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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).

C Appl. Ser. No. 12/649,606, File Wrapper.

Case 6:20-cv-00534-ADA Document 49 Filed 03/19/21 Page 6 of 23
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Abbreviations

Exhibit Description

Br. Plaintiff’s Opening Claim Construction Brief

POSITA Person of ordinary skill in the art

Resp. Defendants’ Responsive Claim Construction Brief

’446 patent U.S. Patent No. 8,249,446

’973 patent U.S. Patent No. 7,872,973

Case 6:20-cv-00534-ADA Document 49 Filed 03/19/21 Page 7 of 23
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I. U.S. Patent No. 7,872,973 (Case No. 6:20-cv-00538)

A. “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 instructing the upstream device 

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

device to prevent the queue from filing”

Huawei has proposed both initial and revised constructions as reflected above. Resp. at 1. 

Both constructions do not purport to define the claim language in question. For instance, Huawei’s

initial proposed construction repeats the same claim language verbatim and then impermissibly 

attempts to in replace the preposition “to” with “controlling.” Id. Huawei’s revised construction 

fares no better, and now attempts to interject the word “instructing” because – according to Huawei 

– the revised construction “more closely reflect the intrinsic evidence.” Resp. at 1.

First, Huawei fails to articulate any legal basis to deviate from the heavy presumption of 

plain and ordinary meaning. Neither of the two Thorner exceptions—lexicography or disavowal—

are even articulated by Huawei. See Thorner v. Sony Computer Entm't Am. LLC, 669 F.3d 1362, 

1365 (Fed. Cir. 2012). Instead, Huawei infers that different standards govern, none of which have 

any legal basis. Huawei claims that its proposed construction “accords with” the specification and 

prosecution history and that the “patent applicant’s arguments evidences” its construction. Resp. 

at 2-4. Huawei fails to assert that the patentees “clearly set forth a definition of the disputed claim 

term,’ and ‘clearly express an intent to define the term.’” Thorner, 669 F.3d at 1365.

Second, Huawei’s purported support in the specification is lacking. Notably, Huawei 

misrepresents that the “specification states that the upstream device 120 may be instructed to slow 

down or stop sending traffic...” Resp. at 2-3 (citing ’973 patent at 5:55-60). But Huawei’s that 

portion of the specification makes no reference to “instructed” or any form of the word. Nor do 

any of the other portions of the specification cited by Huawei. Br. at 2 (citing Fig. 1, 5:55-60, 6:3-

8, 7:7-9, and 7:17-21). Contrary to Huawei’s construction being “fully supported” by the 

specification as Huawei contends, the cited portions provide zero support. 

Case 6:20-cv-00534-ADA Document 49 Filed 03/19/21 Page 8 of 23
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Third, Huawei’s grossly misreads the prosecution history. Huawei points to a statement by 

the applicants during prosecution that a prior art reference (Gupta) taught “a message instructing

the ingress que to slow down the rate at which packets are dequeued.” Br. at 3-4 (emphasis added) 

(quoting Ex. 1 at 3; Ex. 2 at 2, 4). Huawei then attempts to equate those statements with certain 

claim language, which Huawei calls “Message 1.” See Resp. at 4. But Huawei fails to point to any 

statement by the applicants linking the cited portions of Gupta to “Message 1.” Instead, Huawei 

resorts to mere attorney argument untethered to any evidence. See id. (“Gupta’s direct command 

that dictates/instructs an ingress queue (the claimed upstream device) to slow down a rate of 

packets, which is Message 1”). See id. Huawei has thus failed to establish that Message 1 is “like 

Gupta’s direct command.” See id. Even if Huawei had linked the two concepts, Huawei has failed 

to show these statements in the prosecution history would rise to the level of “a clear disavowal of 

claim scope.” CloudofChange, LLC v. NCR Corp.,

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

669 F.3d at 1366).

Fourth, Huawei errs by suggesting that WSOU’s infringement positions should drive 

claim construction. For instance, “[a] claim is construed in the light of the claim language ... not 

in light of the accused device.” SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1118 

(Fed.Cir.1985) (en banc); accord Liebe-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 914 (Fed. 

Cir. 2004) (“[T]he court has ‘admonished against judicial rewriting of claims to preserve 

validity.’”). Even if the accused devices were relevant to claim construction, Huawei does not 

seem to be certain that it understands WSOU’s infringement theory, and instead resorts to 

speculation. See Resp. at 4 (“WSOU’s interpretation is apparently based on the belief...”); 5 

(“WSOU appears to agree ...”); 6 (“WSOU appears to agree ...”).

Fifth, Huawei’s attempt to invoke O2 Micro that there is “more than one ordinary 

meaning” is misplaced. Resp. at 4 (quoting O2 Micro Int’l Ltd. v. Beyond Innov. Tech. Co., 521 

F.3ed 1351, 1361 (Fed. Cir. 2008). Unlike O2 Micro, Huawei is not arguing plain and ordinary 

meaning, rather advocating a special meaning that would replace the word “to” with “instructing.”

Case 6:20-cv-00534-ADA Document 49 Filed 03/19/21 Page 9 of 23
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B. “the message” (claims 1 and 9)

WSOU’s Proposed Construction Defendant’s Proposed Construction

Plain and ordinary meaning Indefinite 

“A patent is invalid for indefiniteness if its claims, read in light of the patent's specification 

and prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the 

scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 898–99 (2014). 

As WSOU explained, “the message” in element 1d is an antecedent reference to “a message” in 

element 1b. 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.” The reference to either reducing or controlling a “rate” in both 

Elements 1b and 1d are flags that they are linked. WSOU also explained how its reading comports 

with the specification. Br. at 5-6. Huawei makes two primary arguments, both of which lack merit.

First, Huawei wrongly suggests that Adpatix is controlling because Huawei unilaterally 

declares the claim language here “extremely similar.” Resp. at 7 (citing Adaptix, Inc. v. AT&T 

Mobility LLC, 2014 WL 12622422, at *7-8 (E.D. Tex. Mar. 24, 2014)). Huawei, however, fails to 

acknowledge the rule that “[c]laim definiteness is analyzed not in a vacuum, but always in light 

of the teachings of the prior art and of the particular application disclosure as it would be 

interpreted by one possessing the ordinary level of skill in the pertinent art.” Ultimax Cement Mfg. 

Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1353 (Fed. Cir. 2009). Here, the intrinsic 

evidence (including the “particular application disclosure”), POSITA, and “pertinent art” are all 

different than Adaptix.1

Second, Huawei implies that improper antecedent basis is fatal to definiteness. That is not 

the law. Rather, “[t]he requirement for antecedent basis is a rule of patent drafting, administered 

during patent examination.” Konami Corp. v. Roxor Games, Inc., 445 F. Supp. 2d 725, 737 (E.D. 

1 The two district court cases relied on by Huawei are similar to Adaptix in that their 

indefiniteness determinations are limited to the particular facts of those cases. See Resp. at 9.

Case 6:20-cv-00534-ADA Document 49 Filed 03/19/21 Page 10 of 23
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Tex. 2006). Accordingly, the “failure to provide explicit antecedent basis for terms does not always 

render a claim indefinite.” Id. (quoting Manual of Patent Examining Procedure § 2173.05(e) (8th 

ed. Rev. 2, May, 2004)). Notably, proper antecedent basis can be present by implication. Cross 

Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1319 (Fed.Cir.2005) (citing

Slimfold Manufacturing Co. v. Kinkead Industries, Inc., 810 F.2d 1113, 1117 (Fed. Cir. 1987)).

Here, as WSOU has described how the claims, when read in view of the specification, “inform, 

with reasonable certainty, those skilled in the art about the scope of the invention.” Br. at 4-7

(citing Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 898–99 (2014)).

Third, contrary to Huawei’s assertion, the intrinsic evidence does support that “the 

message” refers only to Element 1b (what Huawei terms as “Message 1”). As noted, the express 

reference to “reduce a rate” in Element 1b is a flag that links the recitation of “to thereby control 

a rate” in Element 1d. Br. at 5 (“only elements 1b and 1d specify that the sending of the message 

is to either reduce or control a rate”). The syntactically similar terms would flag for a POSITA that 

both Elements refer to the same “message.” Huawei attempts to confuse the matter by engaging in 

existential questions about what it terms as Message 1 and Message 2 can or cannot do as described 

in the preferred embodiments. For instance, citing to the specification, Huawei argues that 

“Message 2 is [sic] also acts respect [sic] to controlling a rate of packets.” Resp. at 10. But that 

entirely misses the point that the claim language of Elements 1b and 1d both specify that the

sending of the message is to either reduce or control a rate. This contrasts with the Element of 1c 

that 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. Here, the only possible reading is that “the message” in Element 1d 

references “a message” in Element 1b.

Case 6:20-cv-00534-ADA Document 49 Filed 03/19/21 Page 11 of 23
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Fourth, the prosecution history supports preserving definiteness. The language of Element 

1d was added by amendment. Ex. A at 4. In doing so, the applicants specifically noted that they 

were incorporating into the independent claims “the upstream device 120 may forward or relay a 

message from the queueing device 140 ... to an upstream network device ... to thereby control the

rate at which the upstream device 120 receives packets from the upstream network device.” Id. at 

17. The applicants then further noted that they “have incorporated a version of this subject matter 

into the independent claims to illustrate how traffic management occurs.” Id. After highlighting 

Element 1d, the Examiner was able to understand and apply the term in performing a search for 

prior art and then issuing a notice of allowance. An “examiner’s knowing allowance of claims 

based on the term that is now questioned” indicates that the claims are not indefinite. Sonix Tech. 

Co., Ltd. v. Publications Int'l, Ltd., 844 F.3d 1370, 1381 (Fed. Cir. 2017).

C. “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)

D. “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)

E. “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”2

Subject to 35 U.S.C. § 112, ¶6 

Indefinite for failure to disclose sufficient 

structure.

1. Huawei has failed to rebut the presumption against 35 U.S.C. §112, ¶6

Relying on selective portions of the claim language, Huawei’s lead argument for invoking 

2 Huawei does not dispute that the phrase “e stream” should be construed as “upstream” to 

correct a clerical error by the USPTO. Compare Br. at 11-12 (addressing clerical error) with 

Resp. at 11-17 (remaining silent).

Case 6:20-cv-00534-ADA Document 49 Filed 03/19/21 Page 12 of 23
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§112, ¶ 6 is the that the claims at issue here and in Williamson both recited the word “module.” 

Resp. at 12. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015) (en banc). In 

Williamson, the claim at issue recited, inter alia, “a distributed learnings server ... comprising ... 

a distributed learning control module for receiving ...” Id. at 1344. The Federal Circuit’s 

emphasized that the prefix “distributed learning control” does not “impart structure into the term 

‘module’” and particularly noted that the written description fails to “impart any structural 

significance” to the “distributed learning control” term. Id. at 1351. The Federal Circuit also found 

probative that the “claim does not describe how the ‘distributed learning control module’ interacts 

with other components in the distributed learning control server in a way that might inform the 

structural character of the limitation-in-question or otherwise impart structure to the ‘distributed 

learning control module.’” Id.

In contrast to the mere “module” of Williamson, claim 9 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].” Accordingly, each of 

the three modules do not merely recite mere “module[s]” but instead “modules executed by

processors.” The phrase “modules executed by processor, the modules including” imparts 

structure into the 3 module terms. Moreover, in contrast to Williamson, the above-quoted claim 

language recites how the three module terms interact with other structural components (e.g., the 

processor) that would inform of the structural character.

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 shows the 

relationship. Here the claim phrase “modules executed by the processor, the modules including” 

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will “impart structure” into the 3 disputed terms. See Williamson, 792 F.3d at 1351. Moreover, the 

above-noted portions of the specification “impart any structural significance” to the 3 disputed 

terms. See id.

Huawei ignores this “modules executed by processor” claim language that WSOU 

highlighted (Br. at 9-10), and erroneously argues that “claim 9 provides high-level descriptions 

about various devices and a processor in in a network device, it fails to inform any structural 

character between the current modules and those devices.” Resp. at 12-13. But the recitation in 

9 that the “modules [are] executed by processors” the claims are doing exactly that—informing 

the structural character between the 3 module terms and the processor (which Huawei tacitly 

concedes is structural). Indeed, Huawei does not dispute the holding of LG Electronics that found 

processors and memories constitute sufficient structure. Resp. at 13-14 (citing LG Electronics, Inc. 

v. Bizcom Electronics, Inc., 453 F.3d 1364, 1372 (Fed. Cir. 2006)); see also Br. at 10. Here, similar 

to LG, 35 U.S.C. §112, ¶6 should not be invoked because the claim itself provides sufficient 

structure, including the processor. See id.

2. Should the Court apply 35 U.S.C. §112, ¶6, the specification discloses 

corresponding structure and algorithms

Huawei tacitly concedes that WSOU has identified sufficient structure by identifying the 

memory (330) and/or processor (320 or 160) of a data processing system (300). Resp. at 14.

Huawei nevertheless wrongly suggests that disclosure of a general purpose computer is not 

sufficient structure as a matter of law. 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 generalpurpose 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-plusfunction 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. 

Huawei also mischaracterizes of Eon. In Eon, the Federal Circuit noted that “[i]t is well-established 

Case 6:20-cv-00534-ADA Document 49 Filed 03/19/21 Page 14 of 23
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that the corresponding structure for a function performed by a software algorithm is the algorithm 

itself,” and then noted that because of this requirement to identify an algorithm “this court has 

consistently required that the structure disclosed in the specification be more than simply a general 

purpose computer or microprocessor.” EON Corp. IP Holdings LLC v. AT & T Mobility LLC, 785 

F.3d 616, 621 (Fed. Cir. 2015). Thus, contrary to Huawei’s suggestion, EON does not stand for 

the proposition that a general purpose computer cannot constitute structure.

Turning to the disclosed algorithm, Huawei’s arguments essentially concede that 

algorithms are disclosed for each of the three module terms. For the first two terms, Huawei 

acknowledges that FIG. 3 (which is described in the specification as a “flow chart illustrating 

operations of software modules within the memory of a data processing system ...”) and 

corresponding descriptions arguably “disclose the algorithms.” Resp. at 15. For the third element, 

Huawei acknowledges that a paragraph in the specification is “relevant to this function.” Id. at 16.

Huawei’s core complaint is not that any algorithm is disclosed but whether a sufficient level of 

detail is provided. Huawei’s only legal basis is the reference to an algorithm being a “step-by-step” 

procedure. Resp. at 16 (quoting Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 

1365 (Fed. Cir. 2012). But nothing in Ergo or any authority cited by Huawei requires that the 

procedure be multiple steps or even a requisite level of detail as Huawei proposes. Algorithms are 

sufficiently disclosed in FIG. 3 and 6:26-32; 7:61-8:30.

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

A. “[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]”

1. The invention is not limited to “subscriber based” components/devices

Asserted claims 1 and 15 do not recite “subscriber-based,” but merely a method or 

apparatus for “regulating rogue behavior in an” optical network component or optical transmission 

device. Nor was “subscriber-based” ever introduced into either of those terms over a span of nearly 

three years of prosecution before the USPTO. As WSOU noted (Br. at 13-15), Huawei’s 

construction is improper because Huawei does seek to define the above phrase or a word within 

the above the phrase; rather, Huawei attempts interject the words “by subscriber-based” when the 

claim is silent. See 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.”).

Turning to the specification, the Detailed Description starts by clarifying that the present 

invention is directed broadly to regulating rogue behavior in all optical transmission devices. ’446 

patent at 13-14 (“The present invention is directed to a manner of regulating rogue behavior in 

optical transmission devices.”). Then, after acknowledging that the “present invention will now be 

described in terms of detecting rogue behavior in an ONT operating within a PON,” the 

specification goes onto explicitly state (and with the intent of avoiding future confusion) that the 

invention is not limited to ONTs, noting that “the present invention has applicability for use in 

other optical transmission devices and in other networks as well.” ’446 patent at 4:32-34. Huawei 

presents a revisionist history of this excerpt (ironically employing the tactics is uses to misinterpret 

Case 6:20-cv-00534-ADA Document 49 Filed 03/19/21 Page 16 of 23
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the claim language) as “the present invention has applicability for use in other optical transmission 

devices [such as ONU or MDU].” Resp. at 23. By artificially interjecting the bracketedunderlined text in the prior quote, Huawei claims that the entire passage is limited to subscriberbased components. Id.

But that is not what this excerpt says. First, the excerpt defines that “the term ‘ONT’ is 

meant to include all subscriber-based optical network components.” ’446 patent at 4:32-34. The 

reference to “applicability for use in other optical transmission devices” means devices nonsubscriber-based components (i.e., other than ONTs). Second, the excerpt states that “the present 

invention has applicability for use ... in other networks as well.” See id. The reference to “other 

networks” is in reference to the “within a PON,” which the specification defines as a passive 

optical network. In making both points, the applicants were expressly stating that their invention 

was not limited in any way, and particularly not limited to ONTs or PONs.

Pointing to recitations to “subscriber-based” in the specification, Huawei states that its 

position is “further evidenced” by the specification, and then points to various recitations of 

“subscriber-based” in the specification. Br. at 22-24; see also id. at 18-22. But the reference to 

“subscriber-based” in certain embodiments described the specification is wholly consistent with 

the description that the invention will be “described in terms of detecting rogue behavior in an 

ONT operating within a PON,” but that the “the present invention has applicability for use in 

other optical transmission devices and in other networks as well.” ’446 patent at 4:32-34. The 

fact that the specification describes certain subscriber-based system comports with the scope of 

the “present invention” being not limited to such subscriber-based components. Even if this had 

been the only disclosed embodiment, and it is not, the Federal Circuit has “expressly rejected the 

contention that if a patent describes only a single embodiment, the claims of the patent must be 

construed as being limited to that embodiment.” Cont’l Circuits LLC v. Intel Corp., 915 F.3d 797

(Fed. Cir.) (citations omitted). For instance, Huawei is wrong to advance its claim construction 

because “the specification only teaches how to regulate a rogue behavior by a subscriber-based 

optical network component/device.” Br. at 20. But Phillips “expressly rejected the contention that 

Case 6:20-cv-00534-ADA Document 49 Filed 03/19/21 Page 17 of 23
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if a patent describes only a single embodiment, the claims of the patent must be construed as being 

limited to that embodiment.” Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en 

banc) (noting that “persons of ordinary skill in the art rarely would confine their definitions of 

terms to the exact representations depicted in the embodiments.”).

2. The Court should not condone Huawei taking inconsistent claim 

constructions before this Court and the PTAB on the same patent

Huawei admits that it offered its subscriber-based construction before this Court while at 

the same time failing to address any “subscriber” or “subscriber-based” construction. Resp. at 24.

Huawei essentially claims that it is justified to speak out of both sides of its mouth in parallel

proceedings before both forums because, given the particular reference it relied upon, “it is 

unnecessary to construe the current term in IPR proceedings.” See id.

In the parallel IPR proceedings, Huawei sought the construction of four terms (“rogue 

behavior,” “suspect rogue flag,” “monitoring window,” and “register”) none of which Huawei 

seeks construction before this Court. Ex. B at 8-9. By stating in the IPR petition that “all terms 

should be construed according to the Phillips standard,” and not seeking construction of the 

remaining terms, Huawei tacitly concedes that the plain and ordinary meaning applies to the term 

at issue here (“[A method of / Apparatus for] regulating rogue behavior in an [optical network 

component comprising an optical transmitter / optical transmission device]”). Thus, Huawei seeks 

a narrower construction before this Court while seeking a broader construction before the PTAB.

In OrthoPediatrics, the PTAB found a similar situation unacceptable where the petitioner “fail[ed] 

to provide a claim construction” before the PTAB, which was “further compounded by the fact 

that Petitioner takes an inconsistent position before the District Court.” OrthoPediatrics Corp. v. 

K2M, Inc., Case IPR 2018-01546, Paper 10, at 11 (P.T.A.B. Feb. 14, 2019) (“OrthoPediatrics”).

The PTAB denied institution of proceedings noting that “[b]y failing to reconcile its proffered 

claim construction here with its very different construction proffered in District Court ... Petitioner 

Case 6:20-cv-00534-ADA Document 49 Filed 03/19/21 Page 18 of 23
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fails to satisfy this burden.”3 See id. While OrthoPediatrics addressed institution of an IPR 

proceedings, the same principles should forbid Huawei from taking inconsistent claim construction 

positions before this Court.

B. “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 ”

Huawei’s arguments regarding “output indicator” lack merit.

First, Huawei attempts to create a dispute about the ordinary meaning because purportedly 

the “term is not commonly known to a person of ordinary skill in the art.” Resp. at 25. Tellingly, 

despite offering expert testimony for other propositions in its brief, Huawei provides no evidence 

(expert testimony or otherwise) to make this bald assertion. See id. Huawei’s position that “output 

indicator” strains credulity when the term “output indicator” or the individual words “output” or 

“indicator” would not been understood by a POSITA. Indeed, Huawei is unable to point to any 

portion of the nearly three years of prosecution history where either the Examiner or the Applicants 

expressed any doubts as to the meaning of “output indicator.” The term “output indicator” 

appeared in the originally filed set of claims. Ex. C at 106-104.4 The Examiner was able to 

formulate search strategies, make rejections, and eventually allow the subject matter that included 

the term “output indicator.” See Ex. C at 40-43 (search strategy); 30-36 (rejection); 6-10 (notice 

of allowance).

3 The procedural posture of OrthoPediatrics was more mature than the current posture here. In 

OrthoPediatrics, the District Court had issued a claim construction order at the time the PTAB 

denied institution. But given that the claim construction hearing is set for April 15-16, 2021 

and the projected date for institution is set for June, this Court will likely have ruled on claim 

construction before the PTAB addresses institution. Accordingly, the procedural posture will 

be the same by the time of the projected institution date.

4 Exhibit C is the file wrapper for the ’446 patent. Page numbers are references to the page 

number in the pdf document (as opposed to a page in a particular document within the file 

wrapper.

Case 6:20-cv-00534-ADA Document 49 Filed 03/19/21 Page 19 of 23
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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.”). 

Huawei claim that its construction is “supported by the specification” is merely a guise for 

importing limitations from exemplary embodiments. Resp. at 25-27. The language Huawei uses to 

describe the specification essentially makes this admission. For instance, Huawei acknowledges 

that the specification describes “two exemplary output indicators: laser bias current (‘LBC’) and 

monitor photodiode current (‘MPC’)” and then concludes (without any evidentiary support) that 

“[n]either of these can be used to indicate an optical output being received by a receiver.” Id. at 

26. As an initial matter, Huawei concedes that these are merely “exemplary” embodiments. These 

“exemplary” embodiments do not define or limit the term “output indicator.” See Phillips, 415 

F.3d at 1323 (noting that “persons of ordinary skill in the art rarely would confine their definitions 

of terms to the exact representations depicted in the embodiments.”).

Third, WSOU had noted how 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 Br. at 16 (citing 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”

Case 6:20-cv-00534-ADA Document 49 Filed 03/19/21 Page 20 of 23
14

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.” In its Response, 

Huawei now states that “[a]ll of those exemplary optical indicators from the [prior art in] the IPR 

are consistent with Huawei’s proposed construction here because they are output indicators that 

can be used to specifically indicate the output power, time, or errors of an optical output being 

transmitted.” Resp. at 27-28. 

As noted above, Huawei should not be allowed to advance inconsistent claim construction 

positions in parallel before both forums. See OrthoPediatrics at 11. At a minimum, Huawei should 

have brought these inconsistent positions to the Court’s attention. It is inconsistent for Huawei 

here to allege that “output indicator” is a “term is not commonly known to a person of ordinary 

skill in the art” before this Court and then advocate a specific meaning of “output indicator” before 

the PTAB. 

C. “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”

Huawei claims that it is not importing limitations from the preferred embodiments into the 

claims and instead merely applying “definitions” of “output (indicator) threshold” that the 

specification purportedly makes “three times.” Resp. at 28. Huawei also suggests that its 

construction is somehow justified because “all the discussions are directed to only one preferred 

embodiment in relation to ‘time length or a percentage of a total time window duration.’” Id. None 

of Huawei’s justifications withstand any scrutiny.

With respect to the purported definitions, Huawei fails to articulate the correct legal 

standard for lexicography that would warrant deviation from the heavy presumption of plain 

meaning. “To act as his/her own lexicographer, the patentee must ‘clearly set forth a definition of 

Case 6:20-cv-00534-ADA Document 49 Filed 03/19/21 Page 21 of 23
15

the disputed claim term,’ and ‘clearly express an intent to define the term.’” See Thorner, 669 F.3d 

at 1365. All of the portions of the specification relied upon by Huawei are phrased in an openended fashion or limited expressly to a particular embodiment. Resp. at 28-30 (quoting ’446 patent

at 5:27-40 (“In accordance with this embodiment of the present invention ... In this 

embodiment...”); id. at 6:50-59 (“In a preferred embodiment ... This can be expressed, for 

example, as a percentage of the total window of the total window duration.”)_. Both of the 

requirements of lexicography are lacking. There is no “clearly set forth definition.” And there is 

no “clearly expressed intent to define the term.”

Huawei also attempts to rewrite the specification claiming that “the phrase ‘the threshold 

may be set to almost any value’ actually means that the threshold may be set to almost any timerelated value with respect to a monitoring window, such as a different percentage other than 50%

(e.g., 40%, 30%) of the window duration, or a time length expressed in another manner.” Resp. at 

29. Huawei provides no evidence for this gloss on the specification. See id. Rather, the 

specification merely states that the threshold “may be set to almost any value.” ’446 patent at 6:60-

65. Huawei’s reimagining of the text of the specification also conflicts with the portion of the 

specification that states that the monitoring “can be expressed, for example as a percentage of the 

total time window.” Id. at 6:50-59. Thus, percentage of the total time window is only one way a 

threshold can be monitored. Huawei’s artificially limiting this term to “time length or a percentage 

of a total time window duration” conflicts with these teachings of the specification.

WSOU has explained that 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. Huawei does not deny that the positions 

are inconsistent but merely claims that it was not necessary to construe the term before the PTAB.

Huawei should not be allowed to advance inconsistent claim construction positions in parallel 

before both forums. See OrthoPediatrics at 11.

Case 6:20-cv-00534-ADA Document 49 Filed 03/19/21 Page 22 of 23
16

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

Brian M. Koide

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

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 March 19, 

2021.

/s/ James L. Etheridge

James L. Etheridge 

Case 6:20-cv-00534-ADA Document 49 Filed 03/19/21 Page 23 of 23