Wi-LAN, Inc. et al v. LG Electronics, Inc. et alRESPONSE TO CLAIM CONSTRUCTION BRIEFS.D. Cal.February 13, 20181 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 CASE NO. 3:17-cv-00358-BEN-MDD LG’s Responsive Claim Construction Brief Richard D. Harris (Pro Hac Vice) James J. Lukas, Jr. (Pro Hac Vice) Callie J. Sand (SBN 293888) GREENBERG TRAURIG, LLP 77 West Wacker Drive, Suite 3100 Chicago, Illinois 60601 Telephone: 312.456.8400 Facsimile: 312.456.8435 harrisr@gtlaw.com lukasj@gtlaw.com sandc@gtlaw.com Joseph S. Leventhal (SBN 221043) Joseph.leventhal@dinsmore.com DINSMORE & SHOHL LLP 655 West Broadway, Suite 840 San Diego, CA 92101 (619) 356-3518 (T)/(619) 400-0501 (F) Attorneys for Defendants LG Electronics, Inc.; LG Electronics U.S.A., Inc.; and LG Electronics Mobilecomm U.S.A., Inc. UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF CALIFORNIA Wi-LAN Inc.; Wi-LAN USA, Inc.; & Wi-LAN Labs, Inc., Plaintiffs, v. LG Electronics, Inc.; LG Electronics U.S.A., Inc.; and LG Electronics Mobilecomm U.S.A., Inc., Defendants. CASE NO. 3:17-cv-00358-BEN-MDD LG’S RESPONSIVE CLAIM CONSTRUCTION BRIEF JUDGE: Roger Benitez MAGISTRATE JUDGE: Mitchell D. Dembin Case 3:17-cv-00358-BEN-MDD Document 92 Filed 02/13/18 PageID.11070 Page 1 of 15 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 i CASE NO. 3:17-cv-00358-BEN-MDD LG’s Responsive Claim Construction Brief TABLE OF CONTENTS I. THE PROPER CONSTRUCTION OF THE ‘924 AND ‘743 PATENTS. .................................................................................................................. 1 A. “[UL connection(s)/connection]served by the wireless cellular mobile unit” ...................................................................................................... 1 B. “at least one of the UL connections” / “the at least two connections” ..................................................................................................... 2 C. “bandwidth request” ......................................................................................... 2 D. “UL services” ................................................................................................... 3 E. “queue”/“operable to queue data” .................................................................... 4 F. “explicit message”/ “one bit message” ............................................................ 5 II. THE PROPER CONSTRUCTION OF THE ‘351 PATENT ..................................... 6 A. “associated with a priority and a traffic shaping rate” and “priority” .......................................................................................................... 6 B. “traffic shaping rate” and “whose traffic shaping rate is not reached” ............................................................................................................ 8 III. THE PROPER CONSTRUCTION OF THE ‘320 PATENT ..................................... 8 A. “[a / the] non-contention reserved access identifier” ....................................... 8 IV. CONCLUSION ......................................................................................................... 11 Case 3:17-cv-00358-BEN-MDD Document 92 Filed 02/13/18 PageID.11071 Page 2 of 15 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ii CASE NO. 3:17-cv-00358-BEN-MDD LG’s Responsive Claim Construction Brief TABLE OF AUTHORITIES Page(s) Federal Cases Apple Inc. v. Wi-LAN, Inc., Case No. 3:14-cv-2235, 2017 WL 5256756 (S.D. Cal. Nov. 13, 2017) ..................... 1, 2 Honeywell Int’l., Inc. v. ITT Indus., Inc., 452 F.3d 1312 (Fed. Cir. 2006) ....................................................................................... 3 Tandon Corp. v. U.S. Int’l Trade Comm’n, 831 F.2d 1017 (Fed. Cir. 1987) ..................................................................................... 10 The Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295 (Fed. Cir. 1999) ..................................................................................... 10 Wi-LAN USA, Inc. v. Apple Inc., 830 F.3d 1374 (Fed. Cir. 2016) ............................................................................... 1, 2, 4 Wi-LAN USA, Inc. v. Ericsson Inc., Case No. 12-cv-23569, 2015 WL 6673742 (S.D. Fla. Jan. 13, 2015) ................ 5, 10, 11 Wi-LAN v. Alcatel-Lucent, Case No. 12-cv-23568, 2013 WL 4811233 (S.D. Fla. Sept. 9, 2013) ......................... 3, 5 Wi-LAN v. Apple, Case No. 13-cv-798 (S.D. Cal.) ................................................................................... 1, 2 Case 3:17-cv-00358-BEN-MDD Document 92 Filed 02/13/18 PageID.11072 Page 3 of 15 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 1 CASE NO. 3:17-cv-00358-BEN-MDD LG’s Responsive Claim Construction Brief I. THE PROPER CONSTRUCTION OF THE ‘924 AND ‘743 PATENTS A. “[UL connection(s)/connection]served by the wireless cellular mobile unit” Wi-LAN’s assertion that the specification teaches “that the bandwidth-allocating device (called a CPE) can serve ‘user’ connections that are internal to the device” should be rejected. (WL Brief, Dkt. No. 85, at 5; see also id. (“[T]he claim language merely refers to connection(s) ‘served by’ the cell phone”).) Wi-LAN argues that the specification “captures connections that are both internal to the cell phone (e.g., to user applications on the phone) and external to the phone.” (Id.) But the parts of the specification on which Wi-LAN relies fail to support that these connections are internal.1 In fact, the term “internal” never appears in the specification, much less in conjunction with UL connections.2 See also Wi-LAN USA, Inc. v. Apple Inc., 830 F.3d 1374, 1387 (Fed. Cir. 2016) (“Apple”) (“We conclude that the patentee did not explicitly define the term ‘UL connections’ in the specification.”). Wi-LAN’s reliance on the prosecution history is similarly unavailing. Wi-LAN cites the Examiner’s “interpretation” of the claims in the February 7, 2013 Office Action, but deliberately omits Wi-LAN’s response, in which Wi-LAN traversed the examiner’s “’brief summary of prosecution to date,’ the examiner’s interpretation of the claims, and the various other statements set forth on pages 2-4 of the Office Action,” noting “that the claim being interpreted on those pages is not a claim pending in the current application.”3 (‘924 Patent, 6/5/13 Response, Ex. 13, at 7.) Wi-LAN also relies heavily on two other court opinions (Apple I and Apple II)4 to conclude that “these external 1 In further support of LG’s position, see U.S. Pat. No. 6,016,311, Ex. 12, incorporated into the ‘924 patent by reference, at Figs. 7 and 8, 11:26-13:4 (disclosing a CPE containing a wireless gateway apparatus that interfaces with external telephone wiring); see also ‘924 patent, Ex. 1, 2:19-24; 14:7-15; Figs. 9 and 10; 17:1-39; 18:58-64. 2 The specification also does not describe a “wireless cellular mobile unit” or “cellular telephone,” much less connections to user applications on a phone. (See Dkt. No. 90.) 3 Wi-LAN’s Ex. I demonstrates that the Examiner is merely “excerpt[ing] parts “from the ‘937 application” rather than the application resulting in the ‘924 patent. (Ex. I at 2.) Wi- LAN’s citations to vast swaths of Exs. J, K, and L also fail to support its claim. 4 Wi-LAN v. Apple, Case No. 13-cv-798, Dkt. Nos. 98, 123 (S.D. Cal.) (“Apple I”) and Apple Inc. v. Wi-LAN, Inc., Case No. 3:14-cv-2235, 2017 WL 5256756 (S.D. Cal. Nov. 13, 2017) (“Apple II”) Case 3:17-cv-00358-BEN-MDD Document 92 Filed 02/13/18 PageID.11073 Page 4 of 15 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 2 CASE NO. 3:17-cv-00358-BEN-MDD LG’s Responsive Claim Construction Brief ‘device’ theories have been expressly rejected by this Court.” (WL Brief at 7.) But this issue was never before the court in Apple I. Apple I involved the term “UL connection(s)” as used in U.S. Patent No. 8,315,640, parent to the ‘924 patent. Wi-LAN initially argued that the term meant “uplink services.” Wi-LAN v. Apple, 830 F.3d 1374, 1379 (Fed. Cir. 2016). After the court rejected Wi-LAN’s construction, Apple successfully moved for summary judgment of noninfringement. Id. at 1380. Wi-LAN then requested that the court reconsider its grant of summary judgment, and sought a new construction of the term, asserting that “UL connection(s)” referred “not to the intermediary node’s connections with its user devices, but instead to its connection with the base station.” Id. The court again rejected Wi-LAN’s construction and Wi-LAN appealed. Although the Federal Circuit did not explicitly distinguish between “users” and “user devices,” it indicated that the specification and claims required the latter, explaining, for example: Each intermediary node [] allocates this bandwidth among its user devices. If the intermediary node receives enough uplink bandwidth to accommodate all of the requests from its user devices, it will distribute to each user device all of the bandwidth it seeks. If it does not receive enough bandwidth to accommodate its users’ needs, it performs a bandwidth-allocation process to its user devices similar to the base station's allocation process to its intermediary nodes, considering the quality-of-service needs associated with its users’ bandwidth requests and using fairness algorithms to distribute the limited bandwidth the base station allocated it. (Id. at 1388 (emphasis added).)5 B. “at least one of the UL connections” / “the at least two connections” Asserted Claims 1, 2, 5-9, and 12-16 are invalid as indefinite. (See Dkt. No. 90.) C. “bandwidth request” A bandwidth request is a “request for permission to transmit an amount of data that can be transmitted in a particular time period.” (See LG Brief, Dkt. No. 84, at 9-11.) The specification is clear that a bandwidth request includes an amount: 5 In Apple II, neither party cited the Federal Circuit’s opinion in briefing, though Apple first raised it at the Markman hearing. The court in Apple II ultimately found it was not determinative, and adopted Wi-LAN’s construction. Apple II, 2017 WL 5256756, at n. 4. Case 3:17-cv-00358-BEN-MDD Document 92 Filed 02/13/18 PageID.11074 Page 5 of 15 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 3 CASE NO. 3:17-cv-00358-BEN-MDD LG’s Responsive Claim Construction Brief (‘924 patent, Ex. 1, at Fig. 8.) Wi-LAN contends that the claim language, which specifies a “bandwidth request being indicative of a pending amount of UL bandwidth,” need not specify a particular “amount of data.” (WL Brief at 15.) Instead, Wi-LAN argues that this indication may be “indirect,” and dismisses Figure 8 as a “non-limiting preferred embodiment.”6 (Id.) But the specification specifically teaches that Figure 8 shows “the present invention.” See Honeywell Int’l., Inc. v. ITT Indus., Inc., 452 F.3d 1312, 1318 (Fed. Cir. 2006) (holding that the claims were limited by “the present invention” statements because the public was entitled to take the patentee at his word as to the invention). Moreover, the term “indicative” does not appear in the specification and Wi- LAN cannot point to any support for its “more indirect” language. Wi-LAN’s attempts to distinguish the Florida’s Court’s construction of the term “bandwidth request” are also unconvincing. Wi-LAN simply argues that the claims of these related patents “did not recite, for example, that the bandwidth request need only be ‘indicative of a pending amount of UL data.’” (WL Brief at 16-17.) But Wi-LAN offers no explanation as to why that court’s construction should be rejected with respect to the “a particular time period” component of LG’s construction. Wi-LAN v. Alcatel-Lucent, Case No. 12-cv-23568, 2013 WL 4811233, at *17 (S.D. Fla. Sept. 9, 2013). D. “UL services” The term “UL Services” is indefinite. (See Dkt. No. 90.) To the extent the Court concludes otherwise, LG’s proposed construction of UL Services, i.e., “functionalities supported by an end user physical device connected to the wireless cellular mobile unit,” best comports with the scanty potentially relevant intrinsic evidence. The specification teaches that CPEs can “request bandwidth allocations from their respective base stations 106 based upon the type and quality of services requested by the customers served by the CPEs.” (‘924 patent, Ex. 1, at 2:21-24.) CPEs do not serve themselves—the only possible “customers served by the CPEs” are end user physical devices. Further, the types 6 Wi-LAN rejects Figure 8 as supporting an “amount [of data]” but relies on this exact figure to support its argument regarding “time periods.” (Id. at 15-16.) Case 3:17-cv-00358-BEN-MDD Document 92 Filed 02/13/18 PageID.11075 Page 6 of 15 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 4 CASE NO. 3:17-cv-00358-BEN-MDD LG’s Responsive Claim Construction Brief of services discussed by the specification (e.g., voice, data, video, real time), are services that could be requested only by end user physical devices, not by CPEs, and Wi-LAN does not identify any intrinsic evidence to the contrary. Ultimately, in the context of the claimed connections, the only way to meaningfully interpret “UL services” is if the services are functionalities supported by an end user physical device connected to the wireless cellular mobile unit. See id; see also Wi-LAN v. Apple., 830 F.3d at 1392 (“[W]e agree with the district court’s construction of ‘UL connections’ as corresponding to the connection between the intermediary node and its user devices.”) Wi-LAN faults LG for looking to the term “UL connection” to inform the meaning of “UL services.” (WL Brief at 9.) But what Wi-LAN categorizes as “piggybacking” between the two terms is nothing more than giving proper weight to the limited, applicable intrinsic evidence. The “UL services” are supported by the “UL connections,” and the terms must be considered with respect to one another to avoid contradictions. Notably, Wi-LAN never suggests that the terms are unrelated. E. “queue”/“operable to queue data” The intrinsic evidence supports LG’s proposed constructions of “queue” / “operable to queue data,” which both tie the term “queue” to a particular quality of service.7 Wi- LAN acknowledges that the specification discloses an embodiment in which each queue relates to a particular QoS level. (WL Brief at 10 (citing ‘924 patent, 4:27-28, 18:14-15).) But Wi-LAN ignores the rest of the specification, which unequivocally confirms that a queue is tied to a particular quality of service. (See, e.g., ‘924 patent, Ex. 1, at Claim 2 (“the wireless cellular mobile unit maintains one or more queues, each queue for grouping data pertaining to connection with similar QoS.”); 4:27-28 (“Within each physical channel queue set, the base station maintains a queue for each QoS.”); 18:11-42; 19:51-62; 20:58-62; Figs. 12, 13.) Even assuming, as Wi-LAN states, that “queues [plural] may be ‘associated with the various data sources,’” that does not support Wi- 7 LG does not argue the term “particular” is equivalent to “single” as Wi-LAN claims. (WL Brief at 10.) Two or more similar QoS levels can still constitute a “particular” QoS. Case 3:17-cv-00358-BEN-MDD Document 92 Filed 02/13/18 PageID.11076 Page 7 of 15 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 5 CASE NO. 3:17-cv-00358-BEN-MDD LG’s Responsive Claim Construction Brief LAN’s view that a queue may correspond to multiple, wildly-diverging QoS levels. (WL Brief at 10-11.) That statement actually supports LG’s position that because various data sources exist, the utility of the claimed invention depends upon each queue corresponding to a particular QoS level—if a queue could correspond to multiple QoS levels, the CPE would have no way to efficiently allocate bandwidth based upon QoS.8 Wi-LAN accuses LG of importing limitations from the specification into the claims by tying the term “operable to queue data” to data received from an end user physical device. But for the same reasons noted with respect to the claim terms “UL services” and “UL connection,” the claims are directed to connections between a wireless cellular mobile unit and end user physical devices. (See Secs. I (A, D), supra.) There is no need to queue data coming from a wireless cellular mobile unit. The bandwidth allocation depends on the needs of the end user physical devices such that the queues must be developed based on data received from the end user physical devices. (See, e.g., ‘924 patent, Ex. 1, at 4:23-25 (“the base station MAC allocates the available bandwidth between the various services depending upon the priorities and rules imposed by their quality of service (‘QoS’)”); Fig. 13.) Instead of addressing this dispositive point, Wi- LAN makes a series of generalized arguments about the lack of disclaimers and definitions of the term “data.” (See WL Brief at 12-13.) In doing so, Wi-LAN ignores the specification’s description of how the claimed invention operates and how that operation defines “queue.” Put simply, the claimed invention would function as intended according to only LG’s proposed construction. F. “explicit message”/ “one bit message” Wi-LAN argues that this Court should not construe these terms as “they are readily understandable in claim context.” (Id. at 17.) But Wi-LAN’s arguments demonstrate that these terms are not readily understandable. Wi-LAN refuses to explain what an “explicit 8 Previous Wi-LAN statements confirm Wi-LAN’s understanding that the term “queue” corresponds to particular QoS level. See Wi-LAN, 2013 WL 4811233, at *21; See also Wi-LAN USA, Inc. v. Ericsson Inc., Case No. 12-cv-23569, 2015 WL 6673742, at *5-6 (S.D. Fla. Jan. 13, 2015). Case 3:17-cv-00358-BEN-MDD Document 92 Filed 02/13/18 PageID.11077 Page 8 of 15 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 6 CASE NO. 3:17-cv-00358-BEN-MDD LG’s Responsive Claim Construction Brief message” entails, only what it does not. (Id. at 19 (claiming an “explicit” message does not “merely ‘indicate’ a request”).) The specification is also unhelpful as to what this means, discussing explicit messages only in the context of a “poll-me” bit. (See, e.g., ‘924 patent, Ex. 1, 9:20-24; 10:26-29; 16:50-60.) Wi-LAN alternately offers a construction for only one of these two constructions. (Wi-LAN Brief at 17-18.) Again, Wi-LAN fails to explain how these clearly related terms are distinguishable, rendering these terms inconsistent with each other. LG’s constructions, in contrast, are supported by the intrinsic evidence. Claim 1 teaches “transmitting . . . a one bit message,” “receiving . . . the allocation of UL bandwidth in which to transmit the bandwidth request, the allocation of UL bandwidth received pursuant to the one bit message,” and “transmitting . . . the bandwidth request.” (‘924 patent, Ex. 1.) The specification states that “the polling of CPEs by the base station may be in response to a CPE setting a ‘poll-me bit’ in an upstream direction or it may be periodic.” (Id. at 9:21-23; see also id. at 10:26-29 (“If the CPE does not have sufficient bandwidth to meet its service requirements, the CPE will request additional bandwidth allocations by either setting its poll-me bit or by piggybacking a bandwidth allocation request.”) A CPE may “set a ‘poll-me’ bit or a ‘priority poll-me’ in a packet to indicate to the base station that it requires a change in bandwidth allocation.” (Id. at 16:50-60; see also Figs. 9 and 10; 17:1-40.) II. THE PROPER CONSTRUCTION OF THE ‘351 PATENT A. “associated with a priority and a traffic shaping rate” and “priority” Wi-LAN argues that the term “associated” and “priority” have plain and ordinary meanings and thus the entire term “associated with a priority and a traffic shaping rate” need not be defined. (WL Brief at 24-25.) Notably—because the term “traffic shaping rate” is indefinite (see Dkt. No. 90)—Wi-LAN fails to offer any plain and ordinary meaning for that term. (WL Brief at 24-25) The crux of the dispute is that LG asserts it is the packets held in the logical channel queues that have the priority and traffic shaping rate quality of service or QoS attributes, while Wi-LAN asserts it is the logical channel queues that do. (Id. at 24.) Wi-LAN cites to only portions of the claims in isolation while Case 3:17-cv-00358-BEN-MDD Document 92 Filed 02/13/18 PageID.11078 Page 9 of 15 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 7 CASE NO. 3:17-cv-00358-BEN-MDD LG’s Responsive Claim Construction Brief ignoring the entire specification. (Id. at 24-25.) Wi-LAN’s ignorance of the specification is transparent as the specification confirms that it is the packets held in the logical channel queues that have the priority and traffic shaping rate QoS attributes. (See LG Brief at 17- 20.) Wi-LAN does cite to one passage from the specification, but that passage also supports LG’s position that the held packets determine the QoS attributes of the logical channel queues. (Id. at 25 (citing ‘351 patent, 7:25-32).) That passage states: “and each logical channel queue LC.sub.i has an appropriate priority and set of QoS attributes defined for it.” (‘351 patent, Ex. 3, 7:27-28.) The specification explains the “defined for it” portion of the passage by stating, “As each packet arrives at a network interface port 104.sub.x, classifier 112.sub.x. examines the packet to route it to an appropriate one of the up to sixteen logical channel queues LC.sub.i. in PQE 108.sub.x.” (Id. at 7:17-20; see also id. at 7:55-67.) Thus, it is the packets that are classified and that define the QoS attributes for each logical channel queue. (See id. at Figs. 3 and 4.) Lest there be any doubt, the specification teaches that if a packet arrives and gets classified, and there is not already an appropriate logical channel queue set up with the same QoS attributes as the received packet, a new or modified logical channel queue with the QoS attributes of the newly received and classified packet is created. (Id. at 7:57-65 (“Classifier 112 determines the appropriate QoS attributes for the received packet. At step 124, classifier 112 determines if a logical channel queue LC is available for the packet and if such a logical channel queue is not available, the method creates the required logical channel queue at step 128, either by creating a new logical channel queue with the necessary QoS attributes, or by modifying the QoS attributes of an existing, empty logical channel queu.”); Fig. 4 (“124 – Is Appropriate Logical Channel Queue Present?”; “128 – Create Logical Channel Queue With Appropriate QoS Attributes”).) There would be no need to create a new or modified logical channel queue for a packet if a logical channel queue— not its held packets—was associated with the QoS attributes.9 9 LG’s proposed construction for “priority” should be adopted for the same reasons because it is the held packets that determine the priority of the queues. Case 3:17-cv-00358-BEN-MDD Document 92 Filed 02/13/18 PageID.11079 Page 10 of 15 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 8 CASE NO. 3:17-cv-00358-BEN-MDD LG’s Responsive Claim Construction Brief B. “traffic shaping rate” and “whose traffic shaping rate is not reached” All Asserted Claims are invalid as indefinite. (See Dkt. No. 90.) III. THE PROPER CONSTRUCTION OF THE ‘320 PATENT A. “[a / the] non-contention reserved access identifier” “Non-contention access” or “contention free access” is the opposite of “contention access.” Unlike “contention access, which can lead to collision (i.e., two mobile stations sending the same code at the same time), “non-contention access” avoids the probability of collision during handover by assigning each mobile station a distinct identifier to uniquely identify each mobile station when it communicates with a target base station. (See LG’s Brief at 4-5, 20-25.) The distinct identifier that leads to the avoidance of collisions in “non-contention access” and that is sent from a mobile station to a target base station to uniquely identify each mobile station is “[a/the] non-contention reserved access identifier.” (See, e.g., ‘320 patent, Ex. 4, 20:15-24; 2:66-3:7; 4:45-55; 5:63-6:4.) Wi-LAN’s construction ignores the known meaning of the term “non-contention access” from the term and Wi-LAN’s numerous explicit admissions regarding that known meaning. (See WL Brief at 19-23.) As expressly defined in the specification of the ‘320 patent (see above) and by Wi-LAN during the prosecution of several related patents that share the same specification, in “non-contention access,” collisions are avoided by allocating to a mobile station a distinct code that uniquely identifies the mobile station. (See, e.g., ‘149 App. PH,10 7/15/16 Office Action Resp., Ex. 14 at 1 (“As is known to those of skill in the art, the term ‘contention free’ in this context means that collisions that can occur on the channel are avoided.”); Ex. 9 at 5 (“contention-based models lead to collisions and [] the dedicated, contention-free access slot of Anigstein addresses such issues.”); Ex. 10 at 13 (same); Ex. 9 at 4 (“the ranging procedure described in Cho is not ‘non-contention’, as claimed in claim 15, because random selection of codes and slots will result in collisions.”); ‘149 App. PH, 4/22/14 Response, Ex. 15 at 6 (“Furthermore, 10 European Patent App. No. EP13161149.3 (“the ‘149 App.”) is related to the ‘320 patent and shares an almost identical specification with the ‘320 patent. Case 3:17-cv-00358-BEN-MDD Document 92 Filed 02/13/18 PageID.11080 Page 11 of 15 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 9 CASE NO. 3:17-cv-00358-BEN-MDD LG’s Responsive Claim Construction Brief amended claim 1 indicates that the random access identifiers are for use in contention free access. Thus, the claim taken as a whole specifies allocating the random access identifier to a single subscriber station which in turn enables the random access identifier to be used in contention free access. Thus, the present invention provides that contention free access is achieved by allocating a random access identifier to a specific first subscriber station so as to uniquely identify the first subscriber station.”).11 Under Wi-LAN’s construction, however, a single code could be allocated to multiple mobile stations because it does not uniquely identify the mobile station. (See WL Brief at 19 (“a reserved code that identifies a mobile station to a base station”).) But this is what happens in the contention-based access that Wi-LAN distinguished in the specification and repeatedly during prosecution—not non-contention access.12 Thus, Wi- LAN’s construction, which covers contention-based access, reads the term “non- contention” out of the claims and defeats the entire purpose of the alleged invention. Wi- LAN’s construction is also wrong because it fails to specify that the claimed code uniquely identifies the mobile station to the target base station and instead broadly states “a base station.” (See WL Brief at 19.) In “non-contention” handover, collisions are avoided at the target base station (i.e., the base station that the mobile station is switching over to). (See, e.g., ‘320 patent, Ex. 4, at Claims 1, 12, 16, and 27.) To avoid collisions at the target base station, the claimed code must uniquely identify the mobile station to the target base station. Collisions may still occur if the code merely uniquely identifies the mobile station to some other base station (such as the serving base station). Wi-LAN’s assertion that LG’s construction excludes two embodiments does not 11 See also ‘149 App. PH, 7/15/16 Response, Ex. 14, at 5 (“the present invention allows the existing random access channel to be used, but with a unique code so that collisions can be avoided for a handover.”); Ex. 11 at 6 (“In the present invention, collisions are avoided through the use of a random access identifier that is unique to the mobile station for a handover.”).) 12 See ‘149 App. PH, 4/22/14 Response, Ex. 15, at 4-5 (“[C]laim 1 requires that the first random access identifier is allocated to a specific first subscriber station and that the allocatable random access identifiers are for use in contention free access. In contrast, D1 teaches that a single code can be allocated to multiple subscriber stations…”); Ex. 11 at 7 (“the base station not being able to discern which mobile station sent the CDMA ranging request is a result of the contention based procedure.”).) Case 3:17-cv-00358-BEN-MDD Document 92 Filed 02/13/18 PageID.11081 Page 12 of 15 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 10 CASE NO. 3:17-cv-00358-BEN-MDD LG’s Responsive Claim Construction Brief help Wi-LAN (WL Brief at 22-23) as it is irrelevant whether the ‘320 patent describes embodiments that do not cover “non-contention” access because “non-contention” is expressly recited by the claims. Further, Wi-LAN’s argument that the ‘320 patent teaches an embodiment where a code merely “reduces” the probability of collision is wrong. The specification clearly states that the use of “pre-allocated codes” avoids the probability of collision—period (‘320 patent, Ex. 4, at 3:1-5), and that the introduction of “pre-allocated codes” in non-contention access to prior art systems (that previously used only randomly- selected codes where two mobile stations could potentially send the same code at the same time (i.e., contention-based access)) reduces the probability of collision system-wide (id. at Abstract, 1:42-44, 5:32-6:13). Wi-LAN’s argument ignores this obvious distinction. Wi-LAN’s assertion that, under the doctrine of claim differentiation, the claimed “non-contention reserved access identifier” does not uniquely identify the mobile station because dependent Claims 15 and 30 recite “uniquely identifies the mobile station in the coverage area of the target base station” also fails. (WL Brief at 21.) “[T]he doctrine of claim differentiation does not allow unrestrained expansion of claims beyond the description of the invention in the specification. . . . Whether or not claims differ from each other, one can not interpret a claim to be broader than what is contained in the specification and claims as filed.” Tandon Corp. v. U.S. Int’l Trade Comm’n, 831 F.2d 1017, 1024, 1028 (Fed. Cir. 1987).13 The express (and Wi-LAN-admitted) meaning of “non-contention access” requires that collision during handover be avoided by assigning each mobile station a distinct identifier that uniquely identifies each mobile station when it communicates with a target base station. Wi-LAN’s construction reads out the requirement that the identifier “uniquely” identify a mobile station and encompasses contention-based access which results in an incorrect construction.14 13See also The Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1302 (Fed. Cir. 1999) 14 Likewise, Wi-LAN cannot avoid its admissions that the “non-contention reserved access identifier” uniquely identifies a mobile station to a target base station “independently of when it is transmitted.” Rather than acknowledge its statements, Wi-LAN points to the Markman Order in the Ericsson litigation. (WL Brief at 23.) But the issue raised in Ericcson was whether the claimed code is “not required to wait until a designated slot Case 3:17-cv-00358-BEN-MDD Document 92 Filed 02/13/18 PageID.11082 Page 13 of 15 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 11 CASE NO. 3:17-cv-00358-BEN-MDD LG’s Responsive Claim Construction Brief IV. CONCLUSION For the reasons set forth above, LG respectfully submits that the Court should adopt its proposed claim constructions and/or find certain of the Asserted Claims of the Patents- in-Suit invalid as indefinite (see Dkt. No. 90). DATED: February 13, 2018 GREENBERG TRAURIG, LLP By/s/ James J. Lukas, Jr. James J. Lukas, Jr. Attorneys for Defendants LG Electronics, Inc.; LG Electronics U.S.A., Inc.; and LG Electronics Mobilecomm U.S.A., Inc. time to be transmitted,” not whether the code must uniquely identify a mobile station to a target base station “independently of when it is transmitted.” Ericsson, 2015 WL 6673742 at *11-12. Here, Wi-LAN has taken the position that the possibility of collision during handover is avoided through uniqueness in code-space, not uniqueness in time. (See, e.g., Ex. 11, at 6 (“In the present invention, a unique code is allocated and a random access channel is used, which by definition does not involve any rendezvous time. … In D5, collisions are avoided through a combined uniqueness of the combination of the code plus the rendezvous time…”).) Case 3:17-cv-00358-BEN-MDD Document 92 Filed 02/13/18 PageID.11083 Page 14 of 15 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 12 CASE NO. 3:17-cv-00358-BEN-MDD LG’s Responsive Claim Construction Brief CERTIFICATE OF SERVICE UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA Wi-LAN, Inc., etc. v. LG Electronics, Inc., etc. USDC Case No. 3:17-cv-00358-BEN-MDD I am employed in the County of Cook, State of Illinois; I am over the age of 18 years and not a party to the within action; my business address is 77 West Wacker Drive, Suite 3100, Chicago, IL 60601. On February 13, 2018, I served LG’S RESPONSIVE CLAIM CONSTRUCTION BRIEF on the interested parties in this action as follows: Victor M. Felix Procopio Cory Hargreaves and Savitch LLP 525 B Street Suite 2200 San Diego, CA 92101 (619) 515-3229 Fax: (619) 744-5409 Email: vmf@procopio.com Attorney for Plaintiffs Christopher M. First Eric J. Enger Leslie V. Payne Heim, Payne & Chorush LLP 1111 Bagby Street Suite 2100 Houston, TX 77002 713-221-2000 Email: cfirst@hpcllp.com eenger@hpcllp.com lpayne@hpcllp.com Attorneys for Plaintiffs BY CM/ECF NOTICE OF ELECTRONIC FILING: I filed the document(s) with the clerk of the court by using the CM/ECF system. Participants in the case who are registered CM/ECF users will be served by the CM/ECF system. Participants in the case who are not registered CM/ECF users will be served by mail or by other means permitted by the court rules. I declare under penalty of perjury that the foregoing is true and correct. Executed on February 13, 2018, at Chicago, IL. /s/ James J. Lukas, Jr. James J. Lukas, Jr. Attorney for Defendants LG Electronics, Inc.; LG Electronics U.S.A., Inc.; and LG Electronics Mobilecomm U.S.A., Inc. Case 3:17-cv-00358-BEN-MDD Document 92 Filed 02/13/18 PageID.11084 Page 15 of 15
