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. 

ZTE CORPORATION, ZTE (USA) INC. 

AND ZTE (TX), INC., 

Defendants. 

C.A. NO. 6:20-cv-00487-ADA 

C.A. NO. 6:20-cv-00488-ADA 

C.A. NO. 6:20-cv-00494-ADA 

C.A. NO. 6:20-cv-00496-ADA

DEFENDANTS’ RESPONSIVE CLAIM CONSTRUCTION BRIEF 

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TABLE OF CONTENTS 

I. INTRODUCTION ...............................................................................................................1

II. LEGAL STANDARDS .......................................................................................................2

A. Claim Construction ..................................................................................................2

B. Indefiniteness ...........................................................................................................3

C. Written Description ..................................................................................................3

III. PRELIMINARY ISSUES ....................................................................................................4

A. Sufficient Notice of Indefiniteness Theory Provided ..............................................4

B. Expert Testimony Not Required ..............................................................................5

C. Enablement and Written Description Issues are Ripe for Analysis .........................6

IV. U.S. PATENT NO. 7,489,929 (CASE NO. 6:20-CV-00488-ADA) ...................................6

A. Term 1: “buffering bearer traffic” (Claim 11) .........................................................6

1. WSOU’s Argument that the phrase requires no construction is 

incorrect. ......................................................................................................7

2. WSOU’s Arguments Contradict The ’929 Patent Specification. .................8

3. WSOU’s Arguments Wipe Out The Entire Purpose Of The 

Buffering. .....................................................................................................9

4. WSOU’s Arguments Wipe Out The Alleged Invention. ...........................10

B. Terms 2-3: “characteristic” and “replacement hysteresis” (Claim 14) ..................13

V. U.S. PATENT NO. 7,742,534 (CASE NO. 6:20-CV-00496-ADA) .................................14

A. Term 1: “maximal number of sub-carriers” (Claims 4, and 7) ..............................14

B. Term 2: “means for selecting” / “means for determining” (Claim 6) ....................15

1. WSOU’s Arguments Regarding The Number Of Terms Are 

Incorrect. ....................................................................................................16

2. WSOU’s Fails To Rebut The Presumption About Means-PlusFunction Terms. .........................................................................................16

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3. WSOU’s Proposed Construction For “Means For Selecting” Is 

Improper. ....................................................................................................18

4. The Limitations are Governed by 35 U.S.C. § 112(f) and Fails to 

Provide Support for the Claimed Function ................................................19

C. Term 3: “quality level” / “as a function of” (Claims 1, 2, 3, 5-9, 13, 16-18) ........19

VI. U.S. PATENT NO. 8,451,839 (CASE NO. 6:20-CV-00487-ADA) .................................21

A. Term 1: “route” / “route-related information” (Claims 1, 3, 6, 8, and 11) ............21

1. The term “route” and “route-related information” lacks discernable 

meaning and antecedent basis ....................................................................21

2. WSOU’s allegation that Defendants are seeking to construe two 

terms is incorrect. .......................................................................................23

B. Term 2: “said predefined using time indicates[ing] a [the] using time of 

said route” (Claims 1 and 6) ..................................................................................23

1. The term “said predefined using time indicates[ing] a [the] using 

time of said route” ......................................................................................23

C. Term 3: “using time” (Claims 1, 6) .......................................................................24

1. The term “using time” lacks antecedent basis in claim 6 ..........................24

VII. U.S. PATENT NO. 9,185,036 (CASE NO. 6:20-CV-00494-ADA) .................................25

A. Term 1: “data flow” / “to enable thereby the control of at least one data 

flow” / “data flow is controlled” / “a data flow” / “the data flow” (Claims 

1, 6,-10, 12, 17-21, and 23-24) ..............................................................................25

1. The ’036 patent specification fails to describe the claimed “data 

flow” ..........................................................................................................25

2. WSOU’s allegation that Defendants are seeking to construe five 

terms is incorrect. .......................................................................................28

B. Term 2: “congestion condition to enable thereby the control of at least one 

data flow in a manner tending to reduce the congestion condition” / 

“congestion condition” / “indication that a congestion condition exists” 

(Claims 1, 12, 23, and 24) ......................................................................................28

1. The ’036 patent specification fails to describe the claimed 

“congestion condition” ...............................................................................28

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2. WSOU’s allegation that Defendants are seeking to construe five 

terms is incorrect. .......................................................................................29

C. Term 3: “end-node associated with the congestion condition” (Claims 1, 

12, 23, and 24) .......................................................................................................29

1. The ’036 patent specification does not contain a written description 

of or enable a POSA to practice the claimed “end-node associated 

with the congestion condition” ..................................................................30

VIII. CONCLUSION ..................................................................................................................30

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TABLE OF AUTHORITIES 

 Page(s) 

Cases 

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

725 F.3d 1315 (Fed. Cir. 2013)..................................................................................................3 

Ariad Pharm., Inc. v. Eli Lilly & Co., 

598 F.3d 1336 (Fed. Cir. 2010) (en banc) .................................................................................4 

Azure Networks, LLC v. CSR PLC, 

771 F.3d 1336 (Fed. Cir. 2014), vacated on other grounds, 575 U.S. 959 

(2015) .........................................................................................................................................2 

Berkheimer v. HP Inc., 

881 F.3d 1360 (Fed. Cir. 2018)................................................................................................15 

Blackboard, Inc. v. Desire2Learn, Inc., 

574 F.3d 1371 (Fed. Cir. 2009)..........................................................................................17, 20 

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

224 F.3d 1308 (Fed. Cir. 2000)................................................................................................25 

C.R. Bard, Inc. v. U.S. Surgical Corp., 

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

In re Donaldson Co., 

16 F.3d 1189 (Fed. Cir. 1994) (en banc) ..................................................................................17 

ePlus, Inc. v. Lawson Software, Inc., 

700 F.3d 509 (Fed. Cir. 2012)....................................................................................................3 

Flash-Control, LLC v. Intel Corporation, 

2020 WL 4561591 (W.D. Tex. July 21, 2020) ..........................................................................6 

Function Media, LLC v. Google Inc., 

708 F.3d (Fed. Cir. 2013).........................................................................................................20 

H-W Technology, L.C. v. Overstock.com, Inc., 

758 F.3d 1329 (Fed. Cir. 2014)..................................................................................................6 

Halliburton Energy Servs. V. M-I LLC, 

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

Intellectual Ventures I LLC v. T-Mobile USA, Inc., 

902 F.3d 1372 (Fed. Cir. 2018)................................................................................................15 

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IPXL Holdings, L.L.C. v. Amazon.com, Inc., 

430 F.3d 1377 (Fed. Cir. 2005)..................................................................................................6 

Lecat’s Ventriloscope v. MT Tool & Mfg., 

351 F. Supp. 3d 1100 (N.D. Ill. 2018) .......................................................................................5 

Lucent Technologies, Inc. v. Gateway, Inc., 

525 F.3d 1200 (Fed. Cir. 2008)..........................................................................................14, 19 

Mantech Environmental Corp. v. Hudson Environmental Services, Inc. ., 

152 F.3d 1368 (Fed.Cir.1998)....................................................................................................8 

Markman v. Westview Instruments, Inc., 

52 F.3d 967 (Fed. Cir. 1995) (en banc) ......................................................................................8 

Nautilus Inc. v. Biosig Instruments, Inc., 

572 U.S. 898 (2014) .............................................................................................................3, 21 

Novo Indus., L.P. v. Micro Molds Corp., 

350 F.3d 1348 (Fed. Cir. 2003)................................................................................................13 

O.I. Corp. v. Tekmar Co., 

115 F.3d 1576 (Fed. Cir. 1997)................................................................................................16 

Phillips v. AWH Corp., 

415 F.3d 1303 (Fed. Cir. 2005) (en banc) .........................................................................2, 3, 9 

Seattle Box Co. v. Indus. Crating & Packing, Inc., 

731 F.2d 818 (Fed. Cir. 1984)..................................................................................................14 

Secor View Techs. LLC v. Nissan N. Am., Inc., No. 12-3306 (FSH), 

2013 WL 6147788 (D.N.J. Nov. 21, 2013) .............................................................................15 

Sitrick v. Dreamworks, LLC, 

516 F.3d 993 (Fed. Cir. 2008)..................................................................................................21 

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

629 F.3d 1331 (Fed. Cir. 2010)..................................................................................................5 

SunRace Roots Enterprise Co., Ltd. v. SRAM Corp., 

336 F.3d 1298 (Fed. Cir. 2003)................................................................................................20 

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

669 F.3d 1362 (Fed. Cir. 2012)........................................................................................2, 3, 24 

USB Bridge Sols., LLC v. Buffalo Inc., 

1-17-CV-001158-LY, 2020 WL 1906898 (W.D. Tex. Apr. 17, 2020) .....................................6 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 6 of 39
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V-Formation, Inc. v. Benetton Group SpA, 

401 F.3d (Fed. Cir. 2005).........................................................................................................21 

Vasudevan Software v. MicroStrategy, Inc., 

782 F.3d 671 (Fed. Cir. 2015)....................................................................................................4 

Vitronics Corp. v. Conceptronic, Inc., 

90 F.3d 1576 (Fed. Cir. 1996)....................................................................................................8 

Widevine Techs., Inc. v. Verimatrix, Inc., 

2009 WL 3734106 (E.D. Tex. 2009) .......................................................................................18 

Zadro Prods., Inc. v. SDI Techs., Inc., 

No. 17-1406 (WCB), 2019 WL 10252726 (D. Del. June 19, 2019) ........................................15 

Statutes 

35 U.S.C. § 112(1) ...........................................................................................................................2 

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

35 U.S.C. § 112(6) ...........................................................................................................................2 

35 U.S.C. § 112(a) .....................................................................................................................2, 29 

35 U.S.C. § 112(b) ................................................................................................................. passim

35 U.S.C. § 112(f) .................................................................................................................. passim

35 U.S.C. § 112, ¶ 1 .........................................................................................................................3 

35 U.S.C. § 112, ¶ 2 .............................................................................................................3, 17, 25 

35 U.S.C. § 112, ¶ 6 ...........................................................................................................15, 16, 19 

Patent Act .........................................................................................................................................3 

Other Authorities 

Wiley-IEEE Electrical and Electronics Engineering Disctionary, p. 84 (2004) (Ex. 

7) ................................................................................................................................................7 

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Pursuant to the Court’s First Amended Scheduling Order (Dkt. No. 45)1 and the Court’s 

February 26, 2021 e-mail order, Defendants ZTE Corporation, ZTE (USA) Inc., and ZTE (TX), 

Inc. (collectively “ZTE”) hereby submits the following opening responsive claim construction 

brief pursuant to the Order Governing Proceedings (“OGP”). 

I. Introduction 

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

asserts eleven patents in eleven separate cases. In order to circumvent the OGP standards for claim 

construction term limits and briefing page limits, and in order to circumvent reducing the number 

of asserted claims in these cases (WSOU maintains and asserts at least 140 claims), WSOU insisted 

on consolidating all eleven different patents into unrelated groupings for this claim construction 

briefing. See Dkt. 60, Exs. 1-2. As such, four patents—U.S. Patent Nos. 7,489,929; 7,742,535; 

8,451,839; and 9,185,036—are briefed herein. 

None of these four patents share a common specification, and each is directed towards 

different technology—despite WSOU’s insistence on these technical groupings (with reduced 

terms and briefing). For instance, first, the ’929 patent is directed towards wireless 

communication network handoffs. The ’929 patent at 3:47-48. Second, the ’534 patent is 

directed towards optimizing the use of feedback in multi-carrier systems. The ’534 patent at 

1:10-13. Third, the ’839 patent is directed towards creating communication network routes in 

access devices. The ’839 patent at Abstract. Fourth, the ’036 patent is directed towards reducing 

local are network congestion. The ’036 patent at 1:25-50. 

1

 There are 11 pending cases. Citations throughout refer to new WDTX Case Nos. -00487 through 

-00497, and specific citations reference to the docket for WDTX Case No. -00487. 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 8 of 39
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Nevertheless, many of the claims are written in functional language without sufficient 

structure for performing those functions, rendering them subject to 35 U.S.C. § 112(f).2

Additionally, because the specifications lack disclosure for performing most of those claimed 

functions, those claims are indefinite. In some instances, the specifications further fail to provide 

sufficient support under § 112(a) or § 112(b) and are further indefinite for those reasons. For 

several other terms, Defendants propose constructions consistent with their use in the intrinsic 

record, rather than—as WSOU seeks—divorcing them from that context. 

II. Legal Standards 

A. Claim Construction 

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

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

CSR PLC, 771 F.3d 1336, 1347 (Fed. Cir. 2014), vacated on other grounds, 575 U.S. 959, 959 

(2015). And, the plain and ordinary meaning of a term is the “meaning that the term would have 

to a person of ordinary skill in the art in question at the time of the invention.” Philips, 415 F.3d 

at 1313. 

There are two exceptions, however, to this general rule that terms are generally given their 

plain-and-ordinary meaning. The two exceptions are when the patentee (1) acts as his/her own 

lexicographer or (2) disavows the full scope of the claim term either in the specification or during 

prosecution. Thorner v. Sony Computer Entm’t Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012). 

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

claim term,” and “clearly express an intent to define the term.” Id. To disavow the full scope of a 

2

 For consistency, Defendants’ references to § 112(a), (b), or (f) are synonymous with § 112(1), 

(2), or (6) and not intended to reflect any specific meaning to respective patent priority dates and 

application of AIA or Pre-AIA law. 

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claim term, the patentee’s statements in the specification or prosecution history must represent “a 

clear disavowal of claim scope.” Id. at 1366. Accordingly, when “an applicant’s statements are 

amenable to multiple reasonable interpretations, they cannot be deemed clear and unmistakable.” 

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

Additionally, extrinsic evidence may be useful in determining the meaning of claim terms, 

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

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

388 F.3d 858, 862 (Fed. Cir. 2004)). Technical dictionaries may also be helpful. Id. at 1318.

B. Indefiniteness 

It is undisputed that patent claims must particularly point out and distinctly claim the 

subject matter regarded as the invention. 35 U.S.C. § 112, ¶ 2. Further, “indefiniteness is a question 

of law and in effect part of claim construction.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 

509, 517 (Fed. Cir. 2012). A claim, when viewed in light of the intrinsic evidence, must “inform 

those skilled in the art about the scope of the invention with reasonable certainty.” Nautilus Inc. v. 

Biosig Instruments, Inc., 572 U.S. 898, 910 (2014). This requirement is necessary so that others of 

skill in the art will have fair notice as to what is off limits in the field and what is available for 

exploration. Halliburton Energy Servs. V. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008). Failure 

to comply with this requirement results in invalidity of the patent. If not, the claim fails § 112, ¶ 2 

and is invalid as indefinite. Nautilus at 901. 

C. Written Description 

The Patent Act further states, under 35 U.S.C. § 112, ¶ 1, that “[t]he specification shall 

contain a written description of the invention, and of the manner and process of making and using 

it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it 

pertains, or with which it is most nearly connected, to make and use the same.” 35 U.S.C. § 112, 

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¶ 1. “The test for the sufficiency of the written description ‘is whether the disclosure of the 

application relied upon reasonably conveys to those skilled in the art that the inventor had 

possession of the claimed subject matter as of the filing date.’” Vasudevan Software v. 

MicroStrategy, Inc., 782 F.3d 671, 682 (Fed. Cir. 2015) (quoting Ariad Pharm., Inc. v. Eli Lilly & 

Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc)). “[T]he test requires an objective inquiry 

into the four corners of the specification from the perspective of a person of ordinary skill in the 

art.” Vasudevan, 782 F.3d at 682 (citing Ariad, 598 F.3d at 1351). Whether the written description 

adequately supports a patent claim is a question of fact. Id. (citing Ariad, 598 F.3d at 1355). “A 

party must prove invalidity for lack of written description by clear and convincing evidence.” Id.

III. Preliminary Issues 

A. Sufficient Notice of Indefiniteness Theory Provided 

WSOU generally alleges that “ZTE [ ] failed to provide any notice as to any indefiniteness 

theory,” for several terms below. See e.g., WSOU Opening Brief, p. 6. This is incorrect. Not only 

is this allegation patently false—as discussed below Defendants provided ample notice, but WSOU 

provides no case law indicating the level of notice provided was insufficient (because the notice 

was sufficient). 

First, Defendants provided ample notice of the indefiniteness theories below. For instance, 

in Defendants’ Invalidity Contentions dated January 6, 2021, Defendants clearly identified the 

terms below as indefinite. See WSOU Opening Brief, Ex. A, pp. 52-63. This is a sufficient notice. 

Nevertheless, Defendants further identified the terms below for indefiniteness in the subsequent 

January 22, 2021 Proposed Terms for Claim Construction (Ex. 1), the February 12, 2021 Proposed 

Claim Constructions (Ex. 2), the February 19, 2021 Disclosure of Extrinsic Evidence (Ex. 3), the 

February 26, 2021 Narrowed Claim Terms (Ex. 4), and the March 2, 2021 Second Narrowed Claim 

Terms (Ex. 5). See also Dkt. 60, Exs. 1-2. In fact, WSOU itself even generated a claim summary 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 11 of 39
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chart listing these indefiniteness terms below for each respective patent and presented it to the 

Court. See Dkt. 60, Ex. 1 (February 12, 2021 Emails from WSOU explaining chart supporting 

WSOU’s position for consolidated terms and briefing); see also Ex. 6. Given this plethora of 

notice, it is now improper for WSOU to allege “absence of any notice,” and the Court should 

disregard WSOU’s argument. WSOU Opening Brief, p. 6. 

Second, Defendants clearly indicated that these terms failed “to satisfy the requirements of 

§ 112(b) because the claims fail to point out and distinctly claim the subject matter which the 

inventors regard as the alleged invention.” See WSOU Opening Brief, Ex. A, pp. 52-63. There is 

no other theory or standard, under both AIA and pre-AIA, for determining whether a claim is 

definite or indefinite. Therefore, WSOU is incorrect because sufficient notice was provided and 

WSOU is not prejudiced. 

Lastly, in view of the ample notice discussed above, and considering that WSOU only first 

raised any notice issue now for this briefing, it is clear that WSOU waived any notice objections. 

The proper time for notice objections—if at all—was the months prior to these claim construction 

briefings. 

B. Expert Testimony Not Required 

WSOU further erroneously alleges that Defendants “waived any reliance on expert 

testimony to support its position[s],” and therefore are unable to “possibly meet [their] burden” for 

several indefinite terms. See e.g., WSOU Opening Brief, p. 5. This is untrue, however, because the 

Federal Circuit made it clear that extrinsic evidence, such as expert testimony, may be used, but 

refrained from requiring expert testimony for proving invalidity for indefiniteness. Spansion, Inc. 

v. Int’l Trade Comm’n, 629 F.3d 1331, 1344 (Fed. Cir. 2010); see also Lecat’s Ventriloscope v. 

MT Tool & Mfg., 351 F. Supp. 3d 1100, 1113 (N.D. Ill. 2018) (finding that “expert testimony is 

not per se required” for indefiniteness and further finding that the “lack of expert testimony [ ] is 

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not fatal.”) In fact, courts routinely determine indefiniteness issues without supporting expert 

testimony. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005) and 

H-W Technology, L.C. v. Overstock.com, Inc., 758 F.3d 1329 (Fed. Cir. 2014) (both affirming 

district court rulings of indefiniteness without supporting expert testimony). 

C. Enablement and Written Description Issues are Ripe for Analysis 

WSOU incorrectly alleges that “this Court instructed ‘patent validity arguments like lack 

of enablement and lack of written description are not proper during claim construction 

proceedings.’” See e.g., WSOU Opening Brief, p. 23. For this allegation, however, WSOU fails to 

reference any decision by this Court. See USB Bridge Sols., LLC v. Buffalo Inc., 1-17-CV-001158-

LY, 2020 WL 1906898, at *5 (W.D. Tex. Apr. 17, 2020). In contrast, this Court permits 

enablement and lack of written description analysis at the Claim Construction phase. See FlashControl, LLC v. Intel Corporation, 2020 WL 4561591 (W.D. Tex. July 21, 2020) (Judge Albright 

ruling on enablement and lack of written description issues in Claim Construction Order). Thus, it 

is clear that this Court considers enablement and lack of written description issues ripe for analysis 

during claim construction. 

Lastly, WSOU only first raised this written/description issue now for this briefing—well 

after this issue was raised and analyzed during the term reduction. See Dkt. 60, Ex. 1; see also Ex. 

6. As such, WSOU waived any objections. The proper time for objection—if at all—was the 

months prior to these claim construction briefings. 

IV. U.S. Patent No. 7,489,929 (Case No. 6:20-cv-00488-ADA) 

A. Term 1: “buffering bearer traffic” (Claim 11) 

WSOU’s Proposed 

Construction 

Defendants’ Proposed Construction 

Plain and ordinary meaning “During a handoff process, all data from the mobile station is 

buffered at the mobile station or all data at the network side is 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 13 of 39
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buffered at the network side until the handoff process is 

complete.” 

1. WSOU’s Argument that the phrase requires no construction is 

incorrect. 

WSOU argues that the phrase “buffering bearer traffic” requires no construction because 

the claim language itself expressly qualifies the “buffering” in terms of what must be buffered, 

and when. See WSOU Opening Brief, p. 2. WSOU is incorrect. Buffering bearer traffic not only 

requires specifically what must be buffered and when, but also requires to qualify where to buffer 

and how long to buffer, as discussed below. 

i. Buffering data requires a temporary storage place. 

“Buffering” is an operation of temporarily storing data being sent or received. See Ex. 7, 

Wiley-IEEE Electrical and Electronics Engineering Disctionary, p. 84 (2004). Storing data 

requires a tangible, physical device (e.g., a memory device) to store the data. 

Here, user data can be buffered at three locations—the mobile station, the network device, 

or at a place other than the mobile station and the network side. These different buffering options 

require different hardware (e.g., memory device) and/or software implementation, and cause 

different data transmission paths. 

Therefore, identifying the place to buffer is important to determine the scope of the claim. 

Claim construction is required here because claim 11 is the only claim reciting the buffering in the 

’929 patent, and yet fails to identify the place to buffer, e.g., at the mobile station, at the network 

side, or at a place other than the mobile station and the network side. Therefore, WSOU’s argument 

is incorrect. 

ii. Buffering data requires a duration for buffering. 

As mentioned above, “buffering” is an operation of temporarily storing data being sent or 

received, thus the duration is critical for construction as well. In the context of the ’929 patent, the 

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temporality of buffering depends on the handoff process. Termination of buffering before 

completion of the handoff process would result in the risk of data packet loss. On the other hand, 

delays in termination of buffering after the completion of the handoff process would result in 

transmission delay of user data. Therefore, the duration of buffering is important because it affects 

the configuration and performance of the system, and thus, directly affects the scope of the claims. 

2. WSOU’s Arguments Contradict The ’929 Patent Specification. 

When the claim term itself fails to inform a person of ordinary skill in the art (POSITA) 

the metes and bounds of the alleged invention, such as the case here, “in interpreting an asserted 

claim, the court should look first to the intrinsic evidence of record, i.e., the patent itself, including 

claims, the specification and, if in evidence, the prosecution history.” Vitronics Corp. v. 

Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). “When construing a claim, a court 

principally consults the evidence intrinsic to the patent, including the claims, the written 

description, and any relevant prosecution history.” Mantech Environmental Corp. v. Hudson 

Environmental Services, Inc. ., 152 F.3d 1368, 1371 (Fed.Cir.1998); see also Markman, 52 F.3d 

at 979 (“To ascertain the meaning of claims, we consider three sources: The claims, the 

specifications, and the prosecution history.”). 

Regarding the claimed buffering, the ’929 patent specification describes as follows: 

Another feature of the disclosed example is that all user data for a 

mobile station involved in the example handoff process is buffered 

during the handoff process. In other words, all data from the 

mobile station is buffered at the mobile station and all data at 

the network side is buffered at the network side until the 

handoff process is complete. The ’929 patent, 6:34-39. 

(Emphasis added). 

 In fact, the above description is the only description in the ’929 patent specification 

regarding the claimed buffering, and Defendants’ proposed claim construction is based on this 

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description. As best understood, the “all data from the mobile station” refers to data in the mobile 

station at the time of the buffering, rather than the data at the network side. Similarly, the “all data 

at the network side” refers to data at the network side at the time of the buffering, rather than the 

data in the mobile station. That is, in the context of the ’929 patent specification, the term “all 

data” focuses on the place where the data is physically located at the time of buffering, and thus, 

“all data” should be understood in connection with either “from the mobile station” or “at the 

network side.” In other words, all data must be either “all data from the mobile station” or “all data 

at the network side”. 

 However, WSOU isolates the term “all data” from “the mobile station” and “the network 

side,” and argues that use of the term “all data” is incorrect. See WSOU Opening Brief, p. 3. In 

particular, WSOU argues that: ““all data” is not necessarily buffered. This is because step (C) 

expressly requires “transmitting an active set update message to the mobile station using the 

existing link between the serving base station and the mobile station.” Id. That is, WSOU is 

effectively arguing that the above description of the ’929 patent specification is incorrect because 

some of the “all data” needs to be transmitted, but not be buffered. Therefore, WSOU’s arguments 

merely amount to attack to the ’929 patent specification for lack of Enablement. 

The main problem of WSOU’s argument regarding the “all data” is that it focuses the 

abstract meaning of isolated words rather than on the meaning of claim terms within the context 

of the patent, and thus, the term is divorced from its particular context, which is the specification. 

See Phillips v. AWH Corp., 415 F.3d 1303, 1321 (Fed. Cir. 2005). 

3. WSOU’s Arguments Wipe Out The Entire Purpose Of The Buffering. 

WSOU argues that the proposed claim construction term of “until the handoff process is 

complete” is incorrect because it requires buffering “must last for the entire duration of a so-called 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 16 of 39
10 

“handoff process.”” See WSOU Opening Brief, p. 3. That is, WSOU argues that the buffering 

should be terminated before the handoff process is complete. This argument is incorrect. 

This argument indicates WSOU lacks understanding of the technology related to the 

alleged patent. The purpose of the buffering is to prevent data packet loss during the handoff 

process and ensure reliability of user data transmission. The ’929 patent also describes that “[i]n 

other words, all data from the mobile station is buffered at the mobile station and all data at the 

network side is buffered at the network side until the handoff process is complete. This further 

allows fast and reliable switching to the strongest target base station while avoiding soft handoff 

for high speed shared channels and the associated dedicated channels.” The ’929 patent, 6:36-42 

(emphases added). 

Therefore, if buffering of user data is terminated before the handoff process is complete, 

as argued by WSOU, then the communication system would be at risk of data packet loss, and 

cannot guarantee a reliable switching between the base stations. Therefore, WSOU’s arguments 

wipe out the entire purpose of buffering. 

4. WSOU’s Arguments Wipe Out The Alleged Invention. 

WSOU argues that use of the term “a handoff process” is incorrect because this is “not 

recited in any of the claims.” See WSOU Opening Brief, p. 3. That is, WSOU argues that the 

process occurring during the step (A) through step (F) recited in claim 1 is not a handoff process 

of the ’929 patent. 

Defendants note that at least claims 1, 3, 8, 10, and 15 recites the term “handoff.” Also, it 

is well-known in the art that a “handoff” is a process, rather than an apparatus or a device. As such, 

claim 1 is written as a collection of steps, i.e., steps (A) through (F). Further, according to the ’929 

patent specification, the process occurring during step (A) through (F) effectively defines the 

handoff process of the ’929 patent. In particular, claim 1 recites “(A) determining if a handoff is 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 17 of 39
11 

desired between the serving base station and the target base station.” After the determining in step 

(A), step (B) through (F) follow, in which step (F) is a step of “releasing the existing link 

responsive to the at least one signal of step (E),” indicating the handoff is effectively completed. 

Moreover, the ’929 patent specification describes that “FIGS. 2 and 3 illustrate an example 

handoff procedure designed according to an embodiment of this invention.” The ’929 patent, 

5:4-5 (emphases added). As shown below in annotated FIG. 2, the handoff procedure of ’929 patent 

starts at step 52 (corresponding to step (A) of claim 1), and effectively ends at step 70 

(corresponding to step (F) of claim 1), and step 72 is the natural consequence of step 70. 

The ’929 patent, FIG. 2 (annotated) 

Therefore, by arguing that the process occurring during step (A) through (F) is not the 

handoff process of the ’929 patent, WSOU wipes out the alleged invention. 

(A) 

(B) 

(C) 

(D) 

(E) 

(F) 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 18 of 39
12 

Further, WSOU argues “that certain dependent claims recite additional processing steps 

(e.g., claims 6, 8, 9, 10, etc.). This reveals that steps (A) through (F) cannot properly be interpreted 

as necessarily reciting (collectively) an exhaustive set of steps for a so-called “handoff process.” 

Case 6:20-cv-00487-ADA, page 8, lines 18-20. That is, WSOU is effectively arguing that the steps 

recited in claims 6, 8, 9, and 10 do not occur during the step (A) through (F). This is incorrect. 

As shown below in annotated FIG. 2, the steps recited in other dependent claims, e.g., 

claims 6, 8, 9, and 10, all occur during the step (A) through (F). 

The ’929 patent, FIG. 2 (annotated) 

Therefore, by arguing that the additional steps recited in dependent claims 6, 8, 9, and 10 

are not the steps occurring during step (A) through (F), WSOU effectively distorts the alleged 

invention of the ’929 patent. 

(A) 

(B) 

(C) 

(D) 

(E) 

(F) 

Claim 6 

Claims 

8-10

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 19 of 39
13 

In sum, WSOU’s arguments fail and the term “buffering bearer traffic” should be 

construed as that “during a handoff process, all data from the mobile station is buffered at the 

mobile station or all data at the network side is buffered at the network side until the handoff 

process is complete.” 

B. Terms 2-3: “characteristic” and “replacement hysteresis” (Claim 14) 

WSOU’s Proposed 

Construction 

Defendants’ Proposed Construction 

Plain and ordinary meaning “Indefinite under 35 U.S.C. § 112(b).” 

First, Defendants incorporate their arguments noted above for the Preliminary Issues in 

Section III. 

Second, with respect to “characteristic,” the ’929 patent fails to mention the term at all. 

And the plain and ordinary meaning of the term (e.g., “a distinguishing trait, quality, or property” 

as defined in Merriam Webster online dictionary) is extremely broad so it mean anything 

untethered by the claims and scope of the patent. 

Additionally, WSOU was unable to point to any portion of ’929 patent specification 

supporting the term “characteristic.” See WSOU Opening Brief, p. 7. WSOU was unable to point 

out what the “characteristic” is because the term is entirely without support in the ’929 patent 

specification. As such, the term is “not amenable to construction” without a speculation or a blind 

guessing, and thus the term is indefinite. See Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 

1348, 1353 (Fed. Cir. 2003). For similar reasons, the term ‘replacement hysteresis’ is also 

indefinite. 

The allegations made by WSOU would not cure the error made in drafting the claims and 

would not make the indefinite terms become definite. The Federal Circuit has repeatedly held that 

“courts may not redraft claims to cure a drafting error made by the patentee, whether to make them 

operable or to sustain their validity.” Lucent Technologies, Inc. v. Gateway, Inc., 525 F.3d 1200, 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 20 of 39
14 

125-26 (Fed. Cir. 2008). Thus, because the scope of the claims is not “sufficiently definite to 

inform the public of the bounds of the protected invention,” the claims defeat the public notice 

function and the claims should be found invalid. Halliburton Energy Servs. V. M-I LLC, 514 F.3d 

1244, 1249 (Fed. Cir. 2008). Therefore, the term “characteristic” and the term “replacement 

hysteresis” are indefinite under 35 U.S.C. § 112(b). 

V. U.S. Patent No. 7,742,534 (Case No. 6:20-cv-00496-ADA) 

A. Term 1: “maximal number of sub-carriers” (Claims 4, and 7) 

WSOU’s Proposed 

Construction 

Defendants’ Proposed Construction 

Plain and ordinary meaning “Indefinite under 35 U.S.C. § 112(b).” 

First, Defendants incorporate their arguments noted above for the Preliminary Issues in 

Section III. 

Second, with respect to this term, the term “maximal number of sub-carriers” is a term of 

degree.3 Therefore, the patent must provide “some standard for measuring that degree.” Seattle 

Box Co. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). 

The ’534 patent specification fails to provide standards to guide a skilled artisan on the 

meaning of “maximal[um] number of sub-carriers,” as there is no description regarding a large, 

small, most, or least number of subcarriers or what constitutes when a maximum or maximal 

number of subcarriers is reached. See generally the ’534 patent. Indeed, this term only appears in 

the claims. Thus, the term is insolubly ambiguous, rendering the phrase indefinite. See, Secor View 

Techs. LLC v. Nissan N. Am., Inc., No. 12-3306 (FSH), 2013 WL 6147788, at 4 (D.N.J. Nov. 21, 

2013); (determining that the term “minimize lateral protuberance from the side of the vehicle” was 

3

 It is noted that WSOU raises concern for the term in claim 7, “a maximum number of subcarriers,” as a distinct phase. See WSOU Opening Brief, fn. 5. It is clear, however, that “a 

maximum” and a “maximal” number of sub-carriers suffer from the same term of degree issues 

discussed herein—as such this discussion is properly counted as one term. 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 21 of 39
15 

a term of degree, that the patent’s specification did not discuss the term, and that a POSITA “is 

not provided with a standard to determine when lateral protuberance becomes minimized.”); see 

also Halliburton Energy Servs., Inc. v. M–I LLC, 514 F.3d 1244, 1249-50 (Fed. Cir. 2008); see 

also Berkheimer v. HP Inc., 881 F.3d 1360, 1363-64 (Fed. Cir. 2018) (affirming district court’s 

holding that the term “minimal redundancy” was indefinite as a term of degree because the 

specification lacked objective boundaries or examples of what constitutes “minimal”). See 

Intellectual Ventures I LLC v. T-Mobile USA, Inc., 902 F.3d 1372, 1381 (Fed. Cir. 2018) (finding 

“ ‘optimiz[ing] . . . QoS’ ” indefinite as it is “a ‘term of degree’ that is ‘purely subjective’ and . . . 

‘fails to provide one of ordinary skill in the art with any way to determine whether’ QoS has been 

‘optimiz[ed].’ ”); Zadro Prods., Inc. v. SDI Techs., Inc., No. 17-1406 (WCB), 2019 WL 10252726, 

at *3 (D. Del. June 19, 2019) (finding claim term indefinite because the specification and the 

claims “provide[] no guidance as to what . . . would satisfy” the claim term.). 

Therefore, the term “maximal number of sub-carriers” is indefinite. 

B. Term 2: “means for selecting” / “means for determining” (Claim 6) 

WSOU’s Proposed 

Construction 

Defendants’ Proposed Construction 

Not subject to 35 U.S.C. § 

112, ¶6. If construed as 

means-plus-function under § 

112, ¶6, however, then 

Function: “selecting said set 

of sub-carriers on which said 

user data is to be received 

from said transmitter” and 

Structure: receiver. 

“Governed by 35 U.S.C. § 112(f) 

Function: selecting a set of sub-carriers from the plurality of 

sub-carriers on which user data is to be communicated from a 

transmitter to a receiver / determining quality levels for subcarriers 

Indefinite under 35 U.S.C. § 112(b) 

Structure: none disclosed.” 

WSOU’s Proposed 

Construction 

Defendants’ Proposed Construction 

Not subject to 35 U.S.C. § 

112, ¶6. 

“Governed by 35 U.S.C. § 112(f) 

Function: determining quality levels for sub-carriers 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 22 of 39
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If construed as means-plusfunction under § 112, ¶6, 

however, then 

Function: “determining 

quality levels for subcarriers” 

Structure: receiver. 

Indefinite under 35 U.S.C. § 112(b) 

Structure: none disclosed.” 

1. WSOU’s Arguments Regarding The Number Of Terms Are 

Incorrect. 

WSOU argues that the term “means for selecting” and the term “means for determining” 

are distinct terms and accuses that Defendants improperly counted these two distinct terms as one. 

Following this logic, the two distinct terms should have distinct structures. Ironically, as shown 

above, WSOU also argues that the two distinct terms are the same thing – the receiver. This selfcontradiction makes WSOU’s entire arguments nonsense. 

It is indisputable that the Court’s analysis for both are intertwined. Defendants presented 

the two terms together because the terms are at the same position: both are included in the same 

claim with the same alleged structure (as alleged by WSOU)—that performs different functions. 

Therefore, WSOU’s arguments fail. 

2. WSOU’s Fails To Rebut The Presumption About Means-PlusFunction Terms. 

The “price that must be paid” for use of means-plus-function claim language is the 

limitation of the claim to the means specified in the written description and equivalents thereof. 

See O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1583 (Fed. Cir. 1997). “If the specification does not 

contain an adequate disclosure of the structure that corresponds to the claimed function, the 

patentee will have ‘failed to particularly point out and distinctly claim the invention as required by 

the second paragraph of section 112,’ which renders the claim invalid for indefiniteness.” 

Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1382 (Fed. Cir. 2009), quoting In re 

Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc). 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 23 of 39
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The ’534 patent specification fails to provide any structure for the term “means for 

selecting” or “means for determining”. The only descriptions, 5:38-52, make it clear that the ’534 

patent specification does not provide any structure for the term “means for selecting” or “means 

for determining. WSOU argues that the structure of both “means for selecting” and “means for 

determining” is the receiver, and ‘receiver’ itself connotes definite structure. WSOU is incorrect. 

The ‘receiver’ here is not a generic, well-known receiver in cellular radio communication. 

Rather, the ‘receiver’ here is the very element of the alleged invention, and the claimed “means 

for selecting” and “means for determining” are the key components of the receiver. For example, 

the ’534 patent specification describes that “[a] particular object of the present invention is to 

provide a method for sending information on the sub-carriers to be used between a transmitter

and a receiver in a more efficient way so that the amount of signaling information in the feed 

forward carrier is reduced but anyway sufficient for performing an efficient resource allocation in 

the multi carrier system. Another object of the invention is to provide a corresponding 

receiver,” (the ’534 patent, 2:1-8), and that “FIG. 4 shows an implementation for a receiver 

according to the present invention.” The ’534 patent, 5:36-37 (emphases added). 

And yet, the ’534 patent specification does not provide any structure of the claimed 

‘receiver’. A person of ordinary skill in the art (POSITA) would not even understand the claimed 

“means for selecting” or “means for determining” are hardware or software. As such, the claims 

defeat “the public notice function of patent claims.” Halliburton Energy Servs. V. M-I LLC, 514 

F.3d 1244, 1249 (Fed. Cir. 2008). 

Further, courts have previously recognized that these similar terms connote functions, not 

structure. See Widevine Techs., Inc. v. Verimatrix, Inc., 2009 WL 3734106, at *14-15 (E.D. Tex. 

2009), (finding (1) “receiving a packet,” (2) “examining a payload portion of the packet ...,” (3) 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 24 of 39
18 

“communicating the selectively encrypted portions over the network in a packet”; (4) “receiving 

the communicated packet”; and (5) “parsing the received packet ...” to be functions that lacked 

algorithmic support). 

Therefore, the terms “means for selecting” and “means for determining” should be 

construed as means-plus-function terms under 35 U.S.C. § 112(f). 

3. WSOU’s Proposed Construction For “Means For Selecting” Is 

Improper. 

Further, WSOU argues that if the term “means for selecting” is construed as means-plusfunction under § 112, ¶6, then the corresponding function should be construed as “selecting said 

set of sub-carriers on which said user data is to be received from said transmitter”. 

The relevant part of claim 6 recites: “means for selecting a set of sub-carriers from the 

plurality of sub-carriers on which user data is to be communicated from a transmitter to a 

receiver.” WSOU attempts to expand the scope of the claim by removing the “the plurality of 

sub-carriers”. If the term “plurality of sub-carriers” is removed, the claimed ‘selecting’ is 

actually not a selecting, rather, it is just a taking whatever it has. This Court should not allow 

such a rewriting of the claims. The Federal Circuit has repeatedly held that “courts may not 

redraft claims to cure a drafting error made by the patentee, whether to make them operable or to 

sustain their validity.” Lucent Technologies, Inc. v. Gateway, Inc., 525 F.3d 1200, 125-26 (Fed. 

Cir. 2008). 

In sum, the term “means for selecting” and the term “means for determining” should be 

construed as means-plus-function terms under 35 U.S.C. § 112(f), and the corresponding 

function of the term “means for selecting” should be “selecting a set of sub-carriers from the 

plurality of sub-carriers on which user data is to be communicated from a transmitter to a 

receiver / determining quality levels for sub-carriers.” 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 25 of 39
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4. The Limitations are Governed by 35 U.S.C. § 112(f) and Fails to 

Provide Support for the Claimed Function 

Because the limitations are governed by 35 U.S.C. § 112(f), the specification must disclose 

a clearly linked function. It does not. WSOU’s identification, WSOU Opening Brief, pp. 10-12, 

amounts to nothing more than a restatement of the claimed function, which is insufficient, because 

it says nothing about how to perform the claimed function. See Blackboard, 574 F.3d at 1383; 

Function Media, LLC v. Google, Inc., 708 F.3d at 1318–19 (Fed. Cir. 2013). Accordingly, the 

claim terms are indefinite. 

C. Term 3: “quality level” / “as a function of” (Claims 1, 2, 3, 5-9, 13, 16-18) 

WSOU’s Proposed 

Construction 

Defendants’ Proposed Construction 

Plain and ordinary meaning “One of a signal-to-interference ratio, a bit error rate, or a 

modulation scheme.” 

The full phrase of the relevant claim 1 demonstrates how these terms are intertwined4

(emphases added): 

at said receiver, selecting said set of sub-carriers on which said user 

data is to be transmitted as a function of said indication and of said 

quality levels. 

 The term “as a function of . . . said quality levels” is indefinite because each part “quality 

level” and “as a function of” is indefinite. 

First, as to the “as a function of”, there are numerous different types of functions (e.g., 

linear, quadratic, polynomial, etc.), and it is not clear what kind of function the claim refers to. The 

’534 patent specification fails to clarify it. 

4

 WSOU alleges that Defendants violate the doctrine of claim differentiation. WSOU Opening 

Brief, pp. 13-14. WSOU is incorrect. The doctrine of claim differentiation does not apply here 

because both the “quality level” and the “as a function of” are recited in the same claim (claim 

1)—not separate claims as addressed by SunRace. See SunRace Roots Enterprise Co., Ltd. v. 

SRAM Corp., 336 F.3d 1298, 1302–03 (Fed. Cir. 2003) (ruling on differences between independent 

and dependent claims). 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 26 of 39
20 

Second, as to the “quality level”, Defendants’ proposed construction is based on the ’534 

patent specification. The relevant portion of the ’534 patent specification describes: 

According to the present invention, the additional and concordant 

information present at the transmitting base station 12 as well as at 

the receiving mobile terminals 11 are a quality level for the different 

sub-carriers of the system. Preferably, such an information is the 

SIR for the different sub carriers as measured at mobile terminals 11 

and sent on the feedback carrier to the base station 12. . . 

Alternatively, the quality level for each sub-carriers may be a bit 

error rate. The ’534 patent, 3:14-26. 

The apparatus set forth in claim 6 wherein each sub-carrier quality 

level identifies at least one of a signal-to-interference ratio, a bit 

error rate, and a modulation scheme for a corresponding sub-carrier 

or a corresponding sub-carrier group. The ’534 patent, Claim 8. 

The ’534 patent specification does not provide any other type of quality level. However, 

WSOU attempts to expand the scope of the claim beyond the disclosure of the ’534 patent without 

providing technological context or enablement. As mentioned above, the ’534 patent specification 

does not even name any quality level other than the signal-to-interference ratio, bit error rate, and 

modulation scheme. WSOU attempts to expand the scope without a boundary, thus this term 

requires construction. 

Courts repeatedly rejected such improper expansion of the scope of the claims. The 

Supreme Court stated that a claim is indefinite if, read in light of the intrinsic record, it fails to 

inform those skilled in the art about the scope of the invention with reasonable certainty. Nautilus, 

Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014). See also Sitrick v. Dreamworks, LLC, 

516 F.3d 993, 999 (Fed. Cir. 2008) (“The scope of the claims must be less than or equal to the 

scope of the enablement to ensure that the public knowledge is enriched by the patent specification 

to a degree at least commensurate with the scope of the claims.”) (internal quotes and citation 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 27 of 39
21 

omitted); see also V-Formation, Inc. v. Benetton Group SpA, 401 F.3d at 1310 (Fed. Cir. 2005) 

(“[The intrinsic evidence] usually provides the technological and temporal context to enable the 

court to ascertain the meaning of the claim to one of ordinary sill at the time of the invention.”). 

Therefore, this Court should not allow such improper expansion of the scope of the claims. 

In sum, the term “as a function of . . . said quality levels” requires claim construction as proposed 

by Defendants in view of the context of the specification. 

VI. U.S. Patent No. 8,451,839 (Case No. 6:20-cv-00487-ADA) 

A. Term 1: “route” / “route-related information” (Claims 1, 3, 6, 8, and 11) 

WSOU’s Proposed 

Construction 

Defendants’ Proposed Construction 

Plain and ordinary meaning Indefinite under 35 U.S.C. § 112(b) 

First, Defendants incorporate their arguments noted above for the Preliminary Issues in 

Section III. 

1. The term “route” and “route-related information” lacks discernable 

meaning and antecedent basis 

Second, the term “route” as used in claims 1 and 6 lacks discernable meaning which is 

compounded by the lack of antecedent basis. The specification and claims fail to state what the 

claimed route is or what it connects to and the claimed route’s relationship to other elements in the 

claim. See the ’839 patent. 

Each independent claim recites “said route” but fails to recite “a route.” This is not an 

antecedent basis issue that may be fixed in hindsight because it is unclear what “route” is being 

referred to and what the “route” connects. Indeed, this term is only used in relation to a “using 

time” but lacks any other defining features such as how the route may relate to the claimed “access 

device” and “server.” And this lack of information regarding “route” matters because the 

ambiguity of the claimed “said route” extends to the recitations of “route related information.” 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 28 of 39
22 

The “route-related information” may or may not apply to the claimed “said route,” and it is further 

unclear what route is referred to by the “route-related information.” 

The specification specifies that the route is created because the “summary of the invention” 

recites “[t]he object of the present invention is to provide a method, in access devices of the 

communication network, for making use of access response messages to create routes.” The ’839 

patent, 3:14-19 (emphasis added). The Abstract also states that “[t]he present invention provides a 

method for creating routes in access devices by using access response messages.” Id., Abstract. 

This is the only reference to a route in the Abstract or Summary, and the only other references to 

“a route” or “said route” is that the route has a using time. Id., 5:13-18. The claim contains no 

information regarding the creation of a route, and thus claim 1 is ambiguous as to whether claim 

1’s “said route” is a created route, any route anywhere, or how it is related to the other recited 

limitations. And, the claims and specification fail to specify what the route is created between or 

what the route connects. Thus, it is impossible to ascertain what the “route” is and renders the 

claim meaningless including the other limitations such as obtaining the related “route-related 

information” as claimed in claims 1 and 6. 

Additionally, in the prosecution history, the applicant disclaims creating a new route, 

stating that U.S. Patent No. 5,922,049 to Radia et al. (“Radia”) “does not disclose ‘updating a 

route table item in a route table based on said route-related information,’ as required by claim 1. 

By contrast, Radia creates a route, not updates an existing route (or entry).” Ex. 14, the ’839 patent 

Prosecution History, 258-68 (emphasis in original). Thus, the applicant expressly disavowed 

creating a route. Thorner, 669 F.3d 1362 at 1365. But, as discussed above, the only recitation of 

any “route” in the specification or the abstract is “a method for creating routes.” Id., Abstract; see 

id., 3:14-19. Thus, nothing in the specification or abstract provides support for anything other than 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 29 of 39
23 

creation of a route, although this is exactly what the applicants expressly disavowed. Thus, even 

if the limitation that the claimed route is “existing” is read into the independent claims, nothing in 

the specification, claims, or prosecution history describes what the existing route is meant to be, 

what the existing route connects, or how the existing route relates to the other elements of the 

claims. 

2. WSOU’s allegation that Defendants are seeking to construe two terms 

is incorrect. 

WSOU’s allegation that Defendants are seeking to construe two terms here is incorrect. As 

demonstrated by Defendants’ argument above, the argument for “route” and “route-related 

information” are linked and related. 

B. Term 2: “said predefined using time indicates[ing] a [the] using time of said 

route” (Claims 1 and 6) 

WSOU’s Proposed 

Construction 

Defendants’ Proposed Construction 

Plain and ordinary meaning “Indefinite under 35 U.S.C. § 112(b).” 

First, Defendants incorporate their arguments noted above for the Preliminary Issues in 

Section III. 

1. The term “said predefined using time indicates[ing] a [the] using time 

of said route” 

The term “said predefined using time indicates[ing] a [the] using time of said route” as 

used in claims 1 and 6 is internally inconsistent and thus indefinite. Under the logic of the claim, 

the predefined using time is predefined. The predefined using time cannot then “indicat[e] a using 

time of said route” unless the using time is equal to the predefined using time, as in the using time 

was defined before it was used (i.e., predefined). This term is not amenable to claim construction 

because “using time” as a distinct term from “the predefined using term” and thus presumably has 

a different meaning. See CAE Screenplates Inc. v. Heinrich Fiedler GmbH & Co. KG, 224 F.3d 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 30 of 39
24 

1308, 1317 (Fed. Cir. 2000) (“In the absence of any evidence to the contrary, we must presume 

that the use of these different terms in the claims connotes different meanings.”). Yet, exemplary 

claim 1 expressly states the “predefined using time indicates a using time.” The specification is 

silent on this issue, merely restating that “the predefined using time is used to indicate the using 

time of said route,” ’839 patent, 6:28-30, with no further explanation or description. Thus, the 

claim’s recitation fails to distinctly point out what is being claimed because this limitation is not 

amenable to construction and fails to inform with reasonable certainty the scope of the invention. 

Nautilus, 572 U.S. at 901. 

WSOU addresses a different part of the specification when it discusses a “using time,” 

where the specification recites “the predefined using time indicating the time which can be used 

by said route.” WSOU Opening Brief, p. 18 (citing ’839 patent, 5:13-15). However, claims 1 and 

6 do not recite this language, which does not recite “using time” at all, but rather that the predefined 

using time “indicates[ing] a [the] using time of said route,” which is recited elsewhere in the 

specification. The ’839 patent, 6:28-30. Thus, WSOU is incorrect to cite to the former recitation 

in the specification, as the claims recite a different portion with different language. 

C. Term 3: “using time” (Claims 1, 6) 

WSOU’s Proposed 

Construction 

Defendants’ Proposed Construction 

Plain and ordinary meaning Claim 6: Indefinite for lack of antecedent basis under 35 

U.S.C. § 112(b)

First, Defendants incorporate their arguments noted above for the Preliminary Issues in 

Section III. 

1. The term “using time” lacks antecedent basis in claim 6 

The term “using time” as used in claim 6 lacks antecedent basis and is thus indefinite. The 

claims recite “the using time” but fail to recite “a using time,” or a “use of time.” This is not an 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 31 of 39
25 

antecedent basis issue that may be fixed in hindsight because it is unclear what “using time” is 

being referred to and whether the “using time” refers to the “predefined using time,” or a different 

“using time.” WSOU’s defense is that the specification contains the same language. WSOU 

Opening Brief, pp. 18-19.5 However, the specification’s lack of clarity does not resolve the 

ambiguity in claim 6. 

VII. U.S. Patent No. 9,185,036 (Case No. 6:20-cv-00494-ADA) 

A. Term 1: “data flow” / “to enable thereby the control of at least one data 

flow” / “data flow is controlled” / “a data flow” / “the data flow” (Claims 1, 

6,-10, 12, 17-21, and 23-24) 

WSOU’s Proposed 

Construction 

Defendants’ Proposed Construction 

Plain and ordinary meaning Indefinite under 35 U.S.C. § 112 ¶ 2. 

First, Defendants incorporate their arguments noted above for the Preliminary Issues in 

Section III. 

1. The ’036 patent specification fails to describe the claimed “data flow”

The use of the claim term “data flow” in claims 1, 6-12, 17-21, 23, and 24 is indefinite. The 

claims and the specification fail to distinctly point out what is claimed. In each independent claim, 

the claims recite “to enable thereby control of at least one data flow,” but the claims and 

specification fail to state how the data flow is controlled. Further, the claims and specification 

provide no indication of any sort of measure of whether the data flow is being controlled or not. 

5

 Defendants originally proposed an alternate construction—“lease time”—for this term based on 

the specification, but Defendants have since removed the alternate for consideration. Further, 

WSOU’s post-hoc rationalization that this alternative definition in the specification is “merely 

exemplary” is not supported by the specification. The specification specifically states twice that 

“the using time is the lease time.” 839 patent, 6:10-14, 7:21-24. For instance, the dependent claim 

5’s narrowing limitation is that the using time, or the lease time, is “in the dynamic configuration 

protocol response message” not that the “using time comprises a lease time” or that the “using 

time is a lease time.”

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Under this broad recitation, turning the network off, through power or disconnection, would 

accomplish control of the data flow. The claims recite that data flow is “restricted” or it may be 

controlled “in a manner tending to reduce the congestion condition,” but the claims and the 

specification provide no indication of what this means. Indeed, the specification fails to discuss 

“restriction” of any data flow at all. Likewise, the specification fails to discuss what “a manner 

tending to reduce the congestion condition” is. These terms all link back to the ambiguity of what 

it means “to enable thereby control of at least one data flow” and that “data flow is controlled.” 

This term, and the constituent terms of “data flow” are thus indefinite. 

The claim also fails to recite what the claimed “data flow” is connecting to. The claim 

only recites that the “data flow” is “in a network,” but a network is by definition a group of 

interconnected things. The claim fails to state what interconnected things are in the claimed 

network, and the claim further fails to state what the data flow moves between within the network. 

This is ambiguous because it is unclear what claimed “data flow” is being controlled, where the 

“data flow” is being controlled, and how the “data flow” is being controlled. Thus, the claim is 

indefinite. 

Claims 7-9 and 18-20 do not resolve the ambiguity and are also indefinite. Claims 7-9 and 

17-19 recite that “the data flow is controlled by dropping at least a portion of those packets” 

associated with source and/or destination addresses. These claims fail to recite or discuss how the 

packets relate to the claimed “data flow” or any other term in the claims other than the source 

and/or destination addresses. These claims also fail to discuss at what point in the network the 

packets are dropped. In theory, packets could be lost at anywhere in the claimed “network,” such 

as a word document on a computer in the network, and this claim limitation would be satisfied. 

Thus, this claim limitation fails to inform with reasonable certainty the scope of the invention. 

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Further, the recited “data flow” in claims 1 and 23 present separate terms that present 

further ambiguity and is thus indefinite. Exemplary claim 1 is as follows: 

1. A method for controlling data flow in a network, comprising:

detecting a congestion condition at a network node in the network; and 

sending a congestion message from the network node at which the congestion 

condition is detected toward one or more network nodes upstream of the 

congestion condition; 

wherein the congestion message comprises an indication that a congestion 

condition exists; 

wherein the congestion message comprises address information of at least one 

end-node associated with the congestion condition to enable thereby the 

control of at least one data flow in a manner tending to reduce the 

congestion condition; 

wherein the congestion message comprises a MAC address associated with a data 

flow to be restricted such that the congestion may be reduced or the 

congestion message comprises a MAC address pair associated with a data 

flow to be restricted such that the congestion may be reduced. 

(emphasis added). 

Claims 1 and 23 recite the restriction or control of three different recitations of “data flow.” 

The use of “a data flow” denotes new different data flows from the claimed “at least one data 

flow.” The claim and the specification fail to recite or describe where the “one data flow” is or 

what it flows between, much less whether the network includes three separate data flows or where 

the data flows come from or where they go or the relation of the three data flows to the other 

limitations of this claim. The specification and prosecution history contains no discussion of this 

claim language, see Ex. 8, ’036 patent; ’036 Prosecution History, as the new “data flow” recitations 

were added in amendment ten years after this application was filed to overcome patentability 

rejections. Id. at 441-51. It is impossible to discern what these data flows move between or what 

the three different recitations of “data flow” are meant to represent. For the above reasons, the 

claim term “data flow” fails to inform with reasonable certainty the scope of the invention. 

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2. WSOU’s allegation that Defendants are seeking to construe five terms 

is incorrect. 

WSOU’s allegation that Defendants are seeking to construe five terms here is incorrect. 

Defendants are seeking to construe the “data flow” as used in its various forms. Which data flow 

is being claimed is important to understanding what is being claimed. Therefore, there is just one 

claim to be construed here. 

B. Term 2: “congestion condition to enable thereby the control of at least one 

data flow in a manner tending to reduce the congestion condition” / 

“congestion condition” / “indication that a congestion condition exists” 

(Claims 1, 12, 23, and 24) 

WSOU’s Proposed 

Construction 

Defendants’ Proposed Construction 

Plain and ordinary meaning “Indefinite under 35 U.S.C. § 112(b)” 

First, Defendants incorporate their arguments noted above for the Preliminary Issues in 

Section III. 

1. The ’036 patent specification fails to describe the claimed “congestion 

condition” 

The use of the claim term “congestion condition” in claims 1-4, 6, 12-15, 17, 23, and 24 is 

indefinite. The claims and the specification fail to distinctly point out what is claimed. In each 

independent claim, the claims recite “wherein the congestion message comprises an indication that 

a congestion condition exists; wherein the congestion message comprises address information of 

at least one end-node associated with the congestion condition to enable thereby the control of at 

least one data flow in a manner tending to reduce the congestion condition,” but the claims and 

specification fail to state how the congestion message enables control or what it means to control 

data flow in a manner tending to reduce the congestion condition. These terms are ambiguous 

because anything that does or does not reduce congestion would satisfy the claim limitations, such 

as turning off the network and disconnecting the network. Further, the claims and specification 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 35 of 39
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provide no indication of any sort of measure of whether the data flow is controlled “in a manner 

tending to reduce the congestion condition.” Under this limitation, congestion could increase or 

stay the same and this claim limitation would be satisfied. 

Furthermore, the claim fails to recite any defining features of the claimed “congestion 

condition,” including what a congestion condition is. The network could be unplugged or 

disconnected and thus unable to send a data flow, and this “congestion condition” would satisfy 

this claim limitation. The claim does recite the “congestion condition” is detected “at a network 

node in the network,” but fails to state what this means. For example, the congestion condition 

could be internal to the network node, it could reflect that the network node does not have power, 

or it could refer to communications received from outside the network into the network node. The 

Specification refers to links and queues, ’839 patent, 3:28-4:14, 4:35-42, but those links are not 

recited in the claims and it is unclear what from the specification would explain how the links and 

queues work with the claimed “congestion condition.” 

2. WSOU’s allegation that Defendants are seeking to construe three 

terms is incorrect. 

WSOU’s allegation that Defendants are seeking to construe three terms here is incorrect. 

Defendants are seeking to construe the “congestion condition” as used in its various forms. How 

congestion condition is used in the claims at various times is important to understanding what is 

being claimed. Therefore, there is just one claim to be construed here. 

C. Term 3: “end-node associated with the congestion condition” (Claims 1, 12, 

23, and 24) 

WSOU’s Proposed 

Construction 

Defendants’ Proposed Construction 

Plain and ordinary meaning “Written description/enablement under 35 U.S.C. § 112(a).” 

First, Defendants incorporate their arguments noted above for the Preliminary Issues in 

Section III. 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 36 of 39
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1. The ’036 patent specification does not contain a written description of 

or enable a POSA to practice the claimed “end-node associated with 

the congestion condition” 

The term “end-node associated with the congestion condition” is invalid because the 

specification lacks written description and an enabling disclosure. Each independent claim, claims 

1, 12, 23, and 24 recite “wherein the congestion message comprises address information of at least 

one end-node associated with the congestion condition.” However, the term “end-node associated 

with the congestion condition,” is not discussed or recited anywhere in the specification or the 

original application papers, and the claims do not contain enough definition to determined what 

the end-node associated with the congestion condition is. The applicant made an amendment after 

a first rejection of the ’232 patent application, 1.5 years after filing, when the term “at least one 

end-node associated with the congestion condition” was first introduced in the claims. Ex. 8, ’036 

Prosecution History at 49-59. Before the amendment, the claims recited the term “at least one node 

associated with the congested condition.” The applicant’s amendment here renders the claim as 

lacking written description because the claims and specification do not describe an end-node 

associated with the congestion condition. The claims even specifically state that the claimed 

congestion condition is detected “at a network node in the network” and thus it is ambiguous what 

relationship the end-node has with the congestion condition. Because the specification and claim 

lack sufficient description and fail to enable a POSA to practice the invention with respect to the 

claimed “end-node associated with a congestion condition,” this claim is invalid under § 112(a). 

Halliburton, 514 F.3d 1244 at 1249. 

VIII. CONCLUSION 

For the foregoing reasons, Defendants request that the Court adopt Defendants’ proposed 

constructions. 

 

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DATED: April 9, 2021 Respectfully submitted, 

 

/s/ Lionel M. Lavenue 

Lionel M. Lavenue 

Virginia Bar No. 49,005 

lionel.lavenue@finnegan.com 

FINNEGAN, HENDERSON, FARABOW, 

GARRETT & DUNNER, LLP 

 1875 Explorer Street, Suite 800 

 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 38 of 39
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CERTIFICATE OF SERVICE 

 The undersigned hereby certifies that all counsel of record who are deemed to have 

consented to electronic service are being served with a copy of this document via the Court’s 

CM/ECF system on April 9, 2021. 

/s/ Lionel M. Lavenue 

 Lionel M. Lavenue 

Case 6:20-cv-00487-ADA Document 69 Filed 04/09/21 Page 39 of 39