IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

XR COMMUNICATIONS, LLC, dba 

VIVATO TECHNOLOGIES,

Plaintiff,

vs.

AT&T SERVICES INC., ET AL.,

Defendants.

ERICSSON, INC. ET AL.,

Intervenors.

Case No. 2:23-cv-00202-JRG-RSP

(LEAD CASE)

JURY TRIAL DEMANDED

DEFENDANTS’ RESPONSE TO PLAINTIFF XR COMMUNICATIONS’ OBJECTIONS 

TO MAGISTRATE JUDGE PAYNE’S CLAIM CONSTRUCTION MEMORANDUM 

OPINION AND ORDER

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XR’s objections (Dkt. 115, “XR Obj.”) merely restate the arguments that it made to 

the Court in its claim construction briefing and during oral argument, which were rejected 

by the Court. For the reasons explained by the Court in the Markman Order (Dkt. 99, 

“Order”) and as further explained below, all of XR’s arguments should again be rejected. 

I. “substantially reciprocal to” (’369 Patent, claim 12)

XR’s objections do not address the Court’s holding or its counsel’s admissions and, 

therefore, the objections should be rejected out of hand. The Court concluded that 

“substantially reciprocal” “is a term of degree”, based in part on XR’s counsel’s admission. 

Order, at 17 & n. 3 (“At the hearing, Vivato seemed to concede this term is a term of 

degree.”). Rather than address this finding, XR once again attempts to read out the term 

“substantially” from the claim and argues that “claim 12 is directed to a TDD system” and 

that in such a system reciprocity need only exist “for certain durations of time.” XR Obj. at 

1. But as the Court correctly noted, “Claim 12 already accounts for when the paths must be 

‘substantially reciprocal’—when the modified signal is transmitted as required by Claim 3.” 

Order, at 17 (emphasis added). Likewise, the Court correctly concluded that XR had not 

identified any “objective boundaries for determine when two paths are substantially 

reciprocal and when they are not.” Order, at 17 (“[C]hallenged with finding something in 

the intrinsic record for how to determine whether two transmission paths are substantially 

reciprocal, Vivato comes up short.”) (emphasis in original). XR’s Objections do not address 

this key issue and, therefore, should be overruled. 

II. “signal transmission/reception coordination logic” (’939 Patent, claims 15, 30)

A. The Court correctly found this term is means-plus-function

XR argues that: (1) the term “signal transmission/reception coordination logic” is 

structural, and (2) that “the intrinsic record establishes a baseband signal processor as a 

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structure for this logic.” Id. at 2. Both arguments were made, are wrong, and were rejected.

XR’s first argument is a rehash of the “any structure” argument it has made to 

multiple Courts, including the Federal Circuit – which rejected XR’s argument. See XR 

Commc’ns, LLC v. ARRIS Solutions, Inc., 2023 WL 3529830, at *3 (Fed. Cir. May 18, 2023) 

(stating that Federal Circuit precedent “compels rejecting” XR’s “position that § 112, ¶ 6, is 

avoided by reciting something that a POSA would understand as structure – even if a 

POSITA wouldn’t understand it as sufficient structure for performing the claimed 

function.”). The Court correctly recognized that XR’s argument was that §112, ¶6 treatment 

was avoided if “the limitation simply refer[s] to a physical object” and rejected it, noting “the 

test is not whether the limitation recites a physical object, but whether a skilled artisan would 

know what that physical object is.” Order at 23. The same reasoning applies to XR’s 

arguments regarding the claims and specification “defining the inputs, outputs, and structural 

connections of the logic.” XR Obj. at 2. At best, these establish that the logic exists: a skilled 

artisan would not know what that logic actually is. Order at 23. 

Second, XR argues that “the intrinsic record establishes a baseband signal processor 

as structure for this logic.” XR Obj. at 2. XR’s citation-less reference to the “intrinsic 

record” contradicts the patent specification’s express statement that the “signal 

transmission/reception coordination logic” “may be implemented as hardware, software, 

firmware, some combination thereof, and so forth.” ’939 Patent at 5:33-37. Indeed, all the 

intrinsic record states about operating at a baseband level is that, for one embodiment, the 

“signal transmission/reception coordination logic” “may be implemented at the baseband 

layer in a system that utilizes off-the-shelf chips,” without providing any detail as to that 

implementation. Id. at 18:39-44; Order at 24 (recognizing that this disclosure said nothing 

about the structure of the “logic”).

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B. XR Proposes Structures that Are Black Boxes that do not Perform the 

Claimed Functions

XR presents two objections to the Court’s structure that the Court should have 

included: (1) the disclosures of Figures 3-6 as corresponding structure, and (2) the algorithm 

of Figure 13 in its corresponding structure. XR Obj. at 3.1 

First, the Court correctly rejected Figures 4 and 5, noting that they simply restate the 

function set forth in the claims and so the disclosures do nothing to explain what the claimed 

“logic” is. Order at 25. While XR asserts, without citation, that Figures 3-6 “show[] the 

processing circuitry in the access station as signal logic 404 structure . . . in Figure 4, or as 

MAC logic 606 in Figure 6”, (XR Obj. at 3), the specification contradicts these assertions. 

Instead, it states that both signal transmission/reception coordination logic 404 and MAC 

coordinator logic 606 “may be implemented as hardware, software, firmware, some 

combination thereof, and so forth.” ’939 Patent at 5:33-37, 7:19-20. Figures 3-6 are not 

structure at all, much less corresponding structure. 

Second, the “algorithm” of Figure 13 does not disclose the claimed function. The 

claims require both: (1) “ascertaining, by monitoring” that an access point is receiving a first 

signal on a first channel, and (2) “restrain[ing]” “responsive to the ascertaining” a second 

access point from transmitting a second signal on a first channel. ’939 Patent, claims 15, 30. 

Even if XR is right and Figure 13 discloses an algorithm, all Figure 13 discloses at best the 

“ascertaining by monitoring” step. ’939 Patent at 18:45-55 (only disclosing that receive 

information is provided to MACs). The Figure 13 embodiment never discloses any kind of 

“restraining” an access point from transmitting.

1 Defendants also object to the Court’s corresponding structure as to this term, for the reasons 

stated in their objections. Those arguments, however, do not impact XR’s objections. 

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III. “restrain . . . responsive to the ascertaining . . .” (’939 Patent, claims 15, 30)

XR’s arguments2read the word “ascertaining” out of the claim and were correctly 

rejected by the Court.

First, XR’s argument that restraining can be in response to ascertaining that an access 

point is receiving a signal because the access point is expecting a signal (XR Obj. at 4) 

contradicts the claim language. The claim language has the present tense requirement that 

the “restraining” occur in response to “ascertaining” when another access point is receiving 

a signal. In other words, the ascertaining has to be done when a signal is being received, not 

a crystal ball prediction of when a signal might be received. If the Applicant wished to claim 

the idea of restraining transmission when expecting a transmission, it could have done so. 

And that’s exactly what the Applicant did for another, unasserted claim: claim 23 recites 

“restraining” when another access point “is expecting” another signal. 

Second, XR argues that the specification says “the regularity or frequency of 

receptions can be used as one way to ascertain when an access point is receiving a signal, 

such as a signal that is recurring.” XR Obj. at 5 (emphasis in original, citing ’939 Patent at 

13:34-64). However, the portion of the specification XR cites for this proposition says no 

such thing. Instead, this portion of the specification refers to a “scanning logic” that does 

the exact opposite of what’s being claimed here: this scanning logic cancels out interference 

so as to “not constantly prevent [an access point] on the same channel from transmitting.” 

’939 Patent at 13:48-60. 

2 This “restrain . . . responsive to” limitation is a function performed by the “signal 

transmission/reception coordination logic”. Defendants note that XR did not identify of 

the specification excerpts it cites for either its expected transmission theory (17:18-32) or 

its regularity of transmission theory (13:34-64) in its proposed corresponding structure at 

Markman, and does not do so in its objections. 

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IV. “the access point” (claims 20-21)

XR’s argument that the claim refers to “the first access point” fails to grapple with 

the fact that the claim recites both “a first access point” and “a second access point” and 

either access point is a reasonable interpretation, which is why the Court correctly found this 

claim to be indefinite. XR fails to explain why the claim necessarily refers to one access 

point as opposed to the other.

V. “2nd Generation Partnership Project (3GPP) Long Term Evolution (LTE), 

3GPP LTE-Advanced, 3GPP LTE-TDD, 3GPP LTE-FDD” (’511 patent, claims 

2, 11)

XR’s objections fail to address this Court’s precedent, which makes clear that the 

meaning of a patent claim cannot change over time. See Fundamental Innovation Sys. Int’l 

LLC v. Samsung Elecs. Co., No. 2:17-cv-145-JRG-RSP, 2018 WL 647734, at *11 (E.D. Tex. 

Jan. 31, 2018) (explaining that the term “USB” should be limited to the USB standards “that 

existed at the time of the invention”). Indeed, if the claim scope covers standards that 

evolved in time (such as ten years after the patent application was filed), then such a claim 

would necessarily be invalid for lack of written description because the inventor could not 

have possessed the full scope of the claim (i.e., including the evolved standard) at the time 

of the invention.

[SIGNATURES APPEAR ON FOLLOWING PAGE]

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Dated: December 13, 2024 Respectfully submitted,

/s/ Matthew S. Yungwirth

Deron R. Dacus (TX SBN 00790553) 

ddacus@dacusfirm.com 

THE DACUS FIRM, P.C. 

821 ESE Loop 323, Suite 430 

Tyler, Texas 75701 

Telephone: 903.705.1117 

Matthew S. Yungwirth 

msyungwirth@duanemorris.com 

Alice E. Snedeker 

aesnedeker@duanemorris.com 

John R. Gibson 

jrgibson@duanemorris.com 

Sajid Saleem 

ssaleem@duanemorris.com 

Duane Morris LLP 

1075 Peachtree Street NE 

Suite 1700 

Atlanta, Georgia 30309 

Telephone: (404)-253-6900

William Andrew Liddell 

waliddell@duanemorris.com

Duane Morris LLP 

Las Cimas IV 

900 S. Capital of Texas Hwy, Suite 300 

Austin, Texas 78746 

Telephone: (512) 277-2300 

Elissa Sanford 

esanford@duanemorris.com 

Duane Morris LLP 

901 New York Avenue N.W. Ste 700 East 

Washington, D.C. 20001-4795 

Counsel for Defendants/Intervenors

/s/ Melissa R. Smith

Melissa R. Smith

Texas Bar No. 24001351

GILLAM & SMITH, LLP 

303 South Washington Avenue

Marshall, Texas 75670

Telephone: (903) 934-8450

Facsimile: (903) 934-9257

Counsel for Defendant

T-Mobile USA, Inc.

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 CERTIFICATE OF SERVICE

I hereby certify that on December 13, 2024, the foregoing document was served upon 

counsel of record for plaintiff in this instant action via e-mail.

/s/ Melissa R. Smith

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