The opinion of the court was delivered by: BERLE M. SCHILLER, District Judge
This case involves allegations of patent infringement relating
to sixteen patents spanning four technological areas.*fn1 On
May 6, 7, and 19, 2004, the Court heard testimony and argument
regarding the parties' proposed claim constructions pursuant to
Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir.
1995) (en banc). The Court now construes the claims at issue as
set out below.
A. GENERAL PRINCIPLES OF CLAIM CONSTRUCTION
The construction of patent claims is governed by Federal
Circuit precedent. See 28 U.S.C. § 1295. As described by that
court, claim construction analysis begins with the words of the
claim. Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc.,
334 F.3d 1294, 1298-99 (Fed. Cir. 2003); Interactive Gift Exp., Inc.
v. Compuserve Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) ("In
construing claims, the analytical focus must begin and remain
centered on the language of the claims themselves, for it is that
language that the patentee chose to use to particularly point out
and distinctly claim . . . his invention."). These words are
examined through the lens of "what one of ordinary skill in the
art at the time of the invention would have understood the term
to mean." Markman, 52 F.3d at 986; see also Tegal Corp. v.
Tokyo Electron Am., Inc., 257 F.3d 1331, 1342 (Fed. Cir. 2001).
In the absence of an express intent to impart a novel meaning to
the claim terms, the words are presumed to take on the ordinary
and customary meanings attributed to them by a person of ordinary
skill in the art. Brookhill-Wilk 1, 334 F.3d at 1298.
After examining the claim terms themselves, there are at least
four other sources to which courts may look for analytical
assistance. First, a court may consult the surrounding words of
the claim to provide contextual indications of the meaning of a
disputed term. Id. at 1299. Second, the written description
must be examined in every case because it is relevant both to
claim construction analysis and to determining if the presumption
of customary meaning is rebutted. Id. at 1298; see also
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.
Cir. 1996) ("[T]he specification is always highly relevant to the
claim construction analysis. Usually, it is dispositive; it is
the single best guide to the meaning of a disputed term.").
Third, the prosecution history "is often of critical significance
in determining the meaning of the claims." Vitronics, 90 F.3d
at 1582. Finally, a court may take into account extrinsic sources
such as dictionaries and expert testimony, provided that these
sources are used to explain ambiguous claims rather than to vary
or contradict unambiguous ones. See Texas Digital Sys., Inc. v.
Telegenix, Inc., 308 F.3d 1193, 1212 (Fed. Cir. 2002);
Brookhill-Wilk 1, 334 F.3d at 1298.
The presumption in favor of ordinary meaning will be overcome
where the patentee, acting as his or her own lexicographer, has
clearly set forth a definition of the term different from that
meaning. Int'l Rectifier Corp. v. IXYS Corp., 361 F.3d 1363,
1373 (Fed. Cir. 2004). The presumption also will be rebutted if
the inventor has clearly disavowed or disclaimed the scope of
coverage by using words or expressions of manifest exclusion or
restriction. Teleflex, Inc. v. Ficosa North Am. Corp.,
299 F.3d 1313, 1325 (Fed. Cir. 2002). B. MEANS-PLUS-FUNCTION TERMS UNDER 35 U.S.C. § 112 ¶ 6
"Means-plus-function" claim terms governed by 35 U.S.C. § 112 ¶
6 (hereinafter "¶ 6") are construed using a different method than
other claim terms. Paragraph 6 provides that if a claim term
describes a "means or step for performing a specified function"
without also stating the "structure, material, or acts" utilized
to perform that function, the term is limited to the "structure,
material, or acts" set out in the specifications that accompany
the claims. Id. In other words, if a claim describes only a
means of performing a certain function, without also describing a
structure used to perform that function, the claim is deemed to
encompass only the function as performed by the corresponding
structures set out in the specifications. If ¶ 6 does not apply,
the term is interpreted using ordinary claim construction
principles. Thus, when construing a claim term that describes a
means of performing a function, a court must first make the
threshold determination of whether ¶ 6 applies.
Under Federal Circuit caselaw, if a term contains the word
"means" there is a rebuttable presumption that ¶ 6 applies.
Micro Chem., Inc. v. Great Plains Chem. Co., Inc.,
194 F.3d 1250, 1257 (Fed. Cir. 1999). The only way to rebut this
presumption is to show that the claim text details sufficient
"structure, material, or acts" to perform the claimed function.
Id. Conversely, if a term does not use the word "means," there
is a rebuttable presumption that ¶ 6 does not apply. Id. This
presumption is overcome when the claim "relies on . . .
functional terms rather than structure or material to describe
performance of the claimed function." Id.
If ¶ 6 applies, a court must determine: (a) the function served
by the term; and (b) the structure used to accomplish that
function. Nomos Corp. v. Brainlab USA, Inc., 357 F.3d 1364,
1367 (Fed. Cir. 2004). Regarding the first inquiry, "[t]he court
must construe the function of a means-plus-function limitation to
include the limitations contained in the claim language, and only those limitations. . . . It is improper to narrow the scope of
the function beyond the claim language." Cardiac Pacemakers,
Inc. v. St. Jude Med., Inc., 296 F.3d 1106, 1113 (Fed. Cir.
2002) (internal citation omitted); see also Micro Chem., 194
F.3d at 1258 ("The statute does not permit limitation of a
means-plus-function claim by adopting a function different from
that explicitly recited in the claim."). Regarding the second
inquiry, the relevant structure is that which is "required for
performing the claimed function" and which "the specification
. . . clearly links or associates . . . to the function recited
in the claim." Golight, Inc. v. Wal-Mart Stores, Inc.,
355 F.3d 1327, 1334 (Fed. Cir. 2004) (quotations omitted). "When multiple
embodiments in the specification correspond to the claimed
function, proper application of [¶ 6] generally reads the claim
element to embrace each of those embodiments." Micro Chem., 194
F.3d at 1259. The claim, however, "does not cover every means for
performing the specified function." Nomos, 357 F.3d at 1368
(quotations omitted). "In order to qualify as corresponding, the
structure must not only perform the claimed function, but the
specification must clearly associate the structure with
performance of the function." Cardiac Pacemakers, 296 F.3d at
1113. "This inquiry is undertaken from the perspective of a
person of ordinary skill in the art." Id.
A. '599: ANTENNA APPARATUS
In small wireless modems, two antennae are often used to
improve reception of radio transmissions. When two antennae are
placed close together, however, there is often "coupling," or
disturbance. The '599 patent addresses this problem with a switch
that selectively connects one antenna to "ground," causing that
antenna to be electrically shortened and thus changing its
frequency so that it operates at a "different" frequency from that of the
active antenna.
The parties agree that this term should be construed according
to its plain and ordinary meaning: "Connected to ground." (See
Broadcom Resp. at 12; Agere Reply at 3.)*fn2
Agere assents to the construction proposed in Broadcom's
response brief: "Tuned to a frequency that is outside the
operating frequency of the [first/second] antenna." (Broadcom
Resp. at 13; Agere Reply at 4-5.)
B. '550: ORTHOGONAL FREQUENCY DIVISION MULTIPLEXING SYSTEM
WITH DYNAMICALLY SCALABLE OPERATING PARAMETERS AND METHOD
THEREOF
In orthogonal frequency division multiplexing ("OFDM") systems,
information is transmitted at various carrier frequencies, often
called sub-carriers. The frequencies are spaced so as to avoid
interference with each other. The '550 patent allows wireless
local area network ("WLAN") hardware operating in an OFDM
transmission scheme to obtain the best combination of speed and
accuracy in transmission. A device operating in this system can
"dynamically scale," or adjust during operation, at least one
operating parameter by "adaptively selecting one of a plurality
of operating parameter scaling options." The system determines
whether to make these adjustments on the basis of information
received via a "feedback signal." 1. "Feedback signal" (Claims 1, 15, 21)
The key issue raised by the parties' competing constructions of
this term is whether the feedback signal must be an actual
electronic signal, i.e., a series of bits, as Broadcom suggests,
or whether the term may also include the absence of a signal, as
Agere contends.
Review of the claim language clearly demonstrates that the term
"feedback signal" must contain actual information. Claim 1 states
that the feedback signal is "receiv[ed]" from a receiver, and
that the determination of whether to scale an operating
characteristic from a first to a second level must be "based on
said feedback signal received from a receiver." (`550 patent,
col. 10, ll. 64, 67 (emphasis added).) Claim 15 states that the
feedback signal is "generat[ed] . . . based on said OFDM
signal" and "provid[ed]" to "dynamic control circuitry."
(Id., col. 12, ll. 8-10 (emphasis added).) It would be
anomalous to speak of a device "receiving," "generating," or
"providing" the absence of a signal. (See Cox Dep. at 128.) In
fact, in response to direct questioning from the Court at the
Markman hearing, Agere's counsel was unable, despite tenacious
efforts, to explain how a receiver could "generate" the absence
of a signal. (R. at 30-35 (May 7, 2004).)
Agere argues that one portion of the specifications supports
its construction. This specification describes how the signal
quality of a transmission line can be measured "by one of the
following: received signal strength, received signal to noise
plus interference ratio, detected errors (CRC), the presence of
acknowledgments (lack of acknowledgments the link for
communication signals is bad)." (`550 patent, col. 7, ll. 56-61.)
Agere correctly notes that the non-parenthetical portion of the
quoted language lists types of feedback that can be used by the
dynamic control circuitry to assess transmission signal quality.
(See Goodman Rep. ¶ 22.) The text within the parenthetical,
however, does not also constitute a "feedback signal" as that
term is used in the claim language. Rather, it is an independent, albeit inarticulate,
clause indicating that the lack of an acknowledgment may also
convey information to the transmitter, i.e., that the link for
communication signals is bad. Accordingly, this portion of the
specifications does not alter the clear meaning of the term
"feedback signal" as evidenced by the claim language.
Agere advances the additional argument that its construction is
supported by dictionary definitions, specifically the definitions
of "feedback" and "signal."*fn3 The Academic Press
Dictionary of Science and Technology defines "feedback" as "the
return of information about a system or process that may effect a
change in the process."*fn4 ACADEMIC PRESS DICTIONARY OF
SCIENCE AND TECHNOLOGY 812 (Christopher Morris ed., 1992). The
Sixth Edition of the IEEE Standard Dictionary of Electrical and
Electronics Terms defines "signal" as "a visual, audible or other
indication used to convey information." (Goodman Rep. ¶ 20.)
Agere combines these two definitions to arrive at its proposed
construction: "An indication depending in part on an original
signal." Agere's combined definition, however, does not resolve
the key dispute noted above regarding whether an "indication"
includes the absence of a signal. Agere merely asserts that the
indication "could come in the form of an acknowledgment
(indicating that the message was received by the receiver accurately) or the absence of an acknowledgment
(indicating that the message was not received by the receiver
accurately)." (Id. ¶ 21; Agere Opening at 24.) Neither the
dictionary definitions nor Agere's combined definition, however,
compels this conclusion. In fact, the IEEE Dictionary definition
of "signal" cited above could be plausibly read to require an
actual physical signal and the IEEE definition of "feedback"
definitely so requires. See supra n. 4. Furthermore, even if
the dictionary definition of "feedback signal" includes the
absence of a signal, that definition would be contrary to the
clear import of the claim text.
In light of the foregoing analysis, the Court finds that the
"feedback signal" must contain an actual electronic signal.
Broadcom's proposed construction, however, includes the further
limitation that a "feedback signal" is a "series of bits."
Broadcom's only support for this language is its expert's
assertion, which is unsupported by a dictionary definition or
reference to the intrinsic record. (Broadcom's Resp. at 18.)
Instead, the Court adopts the broader construction proposed at
the Markman hearing: "An actual electronic signal constituting
information about the communication environment which allows an
originating source to adapt in response to that
information."*fn5
2. "Receiving an OFDM signal that includes OFDM symbols" and
"Generating a feedback signal based on said OFDM signal" (Claim
15)
The original dispute over this term focused on whether a device
employing the patented method must generate a feedback signal for
every OFDM signal, as Broadcom contended, or whether the claim
allows the receipt of multiple OFDM signals before a feedback
signal must be generated, as Agere argued. In its response brief,
Broadcom conceded this point by agreeing to modify its construction. Accordingly, the only remaining substantive dispute
over this claim term concerns "feedback signal," which is
construed as discussed above. Thus, the following construction is
adopted: "The receiver generates a feedback signal by evaluating
a received OFDM signal."
3. "Receiving [receives] a feedback signal from a receiver"
(Claims 1, 21)
Again, the parties' only dispute concerns "feedback signal,"
and therefore the following construction is adopted: "A
transmitting device receives a feedback signal from a receiving
device."
4. "Adaptively selecting one of a plurality of operating
parameter scaling options" (Claims 1, 21)
The central dispute concerning this term is whether it means
choosing one of two or more sets of operating parameter options,
each of which may differ from the other with regard to only one
operating parameter, as Agere suggests, or choosing from two or
more of the operating parameters themselves, as Broadcom
contends.*fn6 At the crux of this dispute is the word
"options." In order for Agere's construction to be correct, the
word "options" must refer to sets of specified values of
parameters.*fn7 In contrast, Broadcom construes the word
"options" as referring to the operating parameters that can be
scaled (i.e., symbol duration, guard time interval, number of
OFDM carriers, and number of bits per symbol per OFDM carrier)
and the value to which the selected parameter is scaled.*fn8
Although each party argues that the plain language of the term
and its surrounding claim text supports its construction, the Court finds that the claim
language itself is ambiguous because it could be read to support
either construction. The specifications, however, provide strong
support for Agere's construction. See Vitronics, 90 F.3d at
1582 ("As we have repeatedly stated, [c]laims must be read in
view of the specification, of which they are a part." (internal
citation and quotations omitted).) The specifications include a
table describing "parameter scaling options" exemplified by sets
of fixed values for the various parameters. (`550 patent, col. 5,
ll. 37-50.) This table "lists several parameter options for
various scaleable transmission or data rates." (Id., col. 5,
ll. 32-33 (emphasis added).) In the text describing the table,
the term "options" is used to describe sets of operating
parameters consisting of given values for each of symbol
duration, guard time, number of carriers, bandwidth, and raw data
rate. (Id., col. 5, ll. 33-36.) Therefore, although the claim
text does not provide clear content to the term "options," the
specification demonstrates that "options" consist of sets of
specified values of parameters. Accordingly, the intrinsic record
supports Agere's proposed construction.
Broadcom attempts to refute this conclusion with evidence from
the prosecution history, specifically arguments made by the
applicant to distinguish the application from prior art. As
originally filed, claim 1 taught "dynamically scaling at least
one of said operating parameters for said method." (Broadcom
Resp. Ex. E at 22 (`550 File History).) This broad claim was
rejected by the Examiner in light of U.S. Patent No. 5,063,574
(the "Moose patent"), which "teaches a method for providing
communication OFDM signals which comprises the step of
dynamically scaling at least one of the operating parameters."
(Id. at 44.) In response, the applicant amended claim 1 to add
the limitation of "said dynamic scaling achieving a scalable
operating characteristic by adaptively selecting one of a
plurality of operating parameter scaling options." (Id. at
49-50.) While this exchange itself does not provide substantive content to the word "options,"
Broadcom points to a statement in which the applicant writes: "To
scale an operating parameter in response to changes in
characteristics of the communications environment, one of a
plurality of scaled operating parameter options (e.g., the number
of carriers, symbol duration, number of bits per carrier, and
guard interval) is selected." (Id. at 75.) Broadcom argues that
this statement clearly equates "options" with parameters. As
Agere points out, however, the very next page of the file history
suggests just the opposite. While describing a figure in the
specifications, the applicant writes: "[T]he dynamic control
circuitry . . . may adaptively select an operating parameter
scaling option having a relatively large guard time interval and
large number of subcarriers to achieve the desired data rate
while providing low delay spread tolerance." (Id. at 76.) This
statement suggests that an "option" consists of a set containing
values of multiple parameters and that this set may be selected
to achieve a desired operating characteristic. Thus, the file
history is ambiguous and therefore cannot overcome the
construction suggested by the specifications. See Oakley, Inc.
v. Sunglass Hut Int'l, 316 F.3d 1331, 1345 (Fed. Cir. 2003)
("[O]ne vague statement from the prosecution history does not
have much bearing on the meaning of [a] claim phrase . . . which
[the Federal Circuit] derive[s] from the specification's clear
teachings. . . .").
Agere also challenges Broadcom's inclusion of the following
sentence in its proposed construction: "The choice of which
operating parameter(s) to select cannot be predetermined."
Broadcom claims that this statement, which is not found in any of
the claim text, is necessitated by the claim term "adaptively."
The problem with this language, however, is obvious given the
Court's resolution of the first dispute. While the choice among
parameter scaling options is "adaptively selected" in real
time, and thus not predetermined, operating parameters themselves
are not "selected," as Broadcom's language would imply. (See
'550 patent, Table 1, col. 5, ll. 37-50; see also R. at 80 (May 7, 2004) (Broadcom's counsel conceding that
"[t]he numbers are predetermined. The options are not.").)
Accordingly, the Court declines to add this further limitation.
Therefore, the Court adopts the following construction: "Making a
selection from among a set of options, each of which has
different values for one or more operating parameters."
5. "Determining that an operating characteristic of said
method should be scaled from a first level to a second level
based on said feedback signal received from said receiver" (Claim
1)
This phrase is the source of four distinct disputes between the
parties. For ease of analysis, the Court addresses each component
separately.
a. "Determining that an operating characteristic of said
method should be scaled . . . based on said feedback signal"
The first dispute is whether the decision to scale an operating
characteristic must be based on only one feedback signal, as
Broadcom contends, or whether it can be based on more than one
feedback signal, as Agere contends. In the claim text, this
dispute concerns the meaning of the phrase "said feedback signal"
and its referent, "a feedback signal." Claim 1 is a method claim
that recites three steps for "providing communication signals
according to operating parameters" using OFDM. (`550 patent, col.
10, ll. 58-60.) The three enumerated steps are introduced in the
claim language by the transition word "comprising" and generally
consist of: (1) receiving a feedback signal; (2) determining that
an operating characteristic should be scaled; and (3) dynamically
scaling the operating characteristic. (Id., col. 10, l. 64-col.
11, l. 8.) In method claims, the transition "comprising" is a
term of art that indicates to patent practitioners that the claim
is "open-ended and allows for additional steps." Invitrogen
Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368 (Fed. Cir.
2003). Thus, when the "comprising" transition is used, steps
beyond those recited in the claims may be performed. Id.
In claim 1, the first two steps in the method described consist
of "receiving a feedback signal from a receiver" and determining
that an operating characteristic should be scaled "based on said
feedback signal." (`550 patent, col. 10, ll. 64, 66.) As claim 1
is a comprising claim in which steps beyond those recited may be
performed, the system described may receive additional feedback
signals before the second step, i.e., the determination to scale,
occurs. Notably, however, the claim language states that the
second step, i.e., the determination to scale, must be based on
"said feedback signal." The singular form of the phrase "said
feedback signal" in the second step and its referent, "a
feedback signal" implies that although many feedback signals may
be received by the receiver, only one feedback signal is the
basis for the decision to scale.*fn9 Abtox, Inc. v. Exitron
Corp., 122 F.3d 1019, 1024 (Fed. Cir. 1997) (finding, in context
of comprising claim, that "[t]his term itself, `said chamber,'
reinforces the singular nature of the chamber"); see also N. Am.
Vaccine, Inc. v. Am. Cyanamid Co., 7 F.3d 1571, 1575-76 (Fed.
Cir. 1993) (acknowledging that patent parlance construes "a" to
connote "one or more," yet holding that "there is no indication
in the patent specification that the inventors here intended it
to have other than its normal singular meaning").
At the Markman hearing, Agere argued that Broadcom's expert,
Dr. Cox, admitted in his deposition that the determination to
scale could be based on multiple feedback signals. (R. 58 (May 7,
2004).) In support, Agere quoted a portion of Dr. Cox's
deposition in which he stated: "It could be more than one
feedback signal, and each well, if there is more than one
feedback signal, the transmitter could evaluate more than one
feedback signal." (Agere's Post-Markman Br. Ex. 2 (quoting Cox Dep. at 28-29).) The excerpt, however, does not lead
the Court to the conclusion Agere suggests. In context, Dr. Cox
is referring to Broadcom's proposed construction, which, in
relevant part, states that "[t]he transmitter evaluates one
feedback signal as it is received from a receiver, and based on
that evaluation makes a decision that at least one operating
characteristic . . . must be scaled." In other words, the
transmitter can evaluate a feedback signal, or even several
feedback signals, without making the determination to scale.
Thus, Dr. Cox's admission that more than one feedback signal can
be evaluated does not necessarily lead to the conclusion that
the determination to scale an operating parameter, which,
according to the claim language, is "based on said feedback
signal," could be based on more than one feedback signal. Rather,
as noted previously, the patent contemplates that, while multiple
feedback signals may be received, only one feedback signal may be
the basis for the decision to scale. Furthermore, Agere's own
expert stated in his report that "one of ordinary skill in the
art would understand that `based on said feedback signal' means
that the determination of whether the operating characteristic in
question should be scaled is based, in part, on the feedback
signal." (Goodman Rep. ¶ 13 (emphasis added).) Therefore,
according to the claim language, although the transmitter may
receive more than one feedback signal, the determination to scale
an operating parameter must be based on one feedback signal.
The second dispute is whether there must be a scaling event
after each evaluation of a feedback signal by the transmitter, as
Broadcom contends. Broadcom's argument is based on a comparison
of the language used in the "determining" step of claim 1 to that
used in the "determining" steps of claims 15 and 21. Claim 1
teaches a transmitter "determining that an operating
characteristic . . . should be scaled," whereas the transmitters
of claims 15 and 21 "determine[] whether" scaling should occur. (`550 patent, col. 10, l. 65, col.
12, ll. 11, 63.) According to Broadcom, the phrase "determining
that" suggests that an affirmative decision to scale must occur
after each feedback signal is received.
The Court rejects Broadcom's position. First, the conclusion
that the evaluation of a feedback signal does not necessarily
result in a scaling event is a necessary corollary of the Court's
determination above that the transmitter may receive multiple
feedback signals before the decision to scale occurs. Second,
Broadcom's argument is belied by the claim language because the
word "determining" itself suggests that, after the evaluation of
a feedback signal, the system may either: (1) decide to scale; or
(2) decide not to scale. (See Goodman Rep. ¶ 8 (citing
Webster's II New College Dictionary definition of "to decide or
settle").) Accordingly, the claim does not require that a scaling
event occur after each evaluation of a feedback signal.
c. "from a first level to a second level"
The third dispute concerns whether the phrase "from a first
level to a second level" should be construed to mean "from a
current level to a second level," as Broadcom contends, or should
not be construed at all, as Agere argues. The Court agrees with
Agere that the plain language of this claim term is clear to both
skilled artisans and laypersons alike. As Agere's expert stated,
one of ordinary skill in the art "would understand `first level'
and a `second level' to refer to two different levels, the `first
level' being the level of the operating characteristic before the
operating characteristic is scaled and the `second level' being
the level of the operating characteristic after the operating
characteristic is scaled." (Id. ¶ 11.)
Despite Dr. Goodman's explanation, which seems eminently
logical to the Court, Broadcom asks the Court to construe the
phrase "first level" to mean "current level." Broadcom, however,
fails to offer any specific support for its construction, merely
stating, "[i]f the claimed `first level' is not the `current
level,' what else could it be?"*fn10 (Broadcom Resp. at 35.)
As there is no clearer way to define this claim term than the
language of the claim itself, and as Broadcom has offered no
support for its differing construction, the Court finds that the
term does not need construction. See, e.g., W.E. Hall Co. v.
Atlanta Corrugating, LLC, 370 F.3d 1343, 1350 (Fed. Cir. 2004)
(affirming district court determination that term "single piece"
was "sufficiently clear to make even resort to the dictionary
unnecessary"); Applera Corp. v. Micromass UK Ltd., 186 F. Supp.2d 487,
508 (D. Del. 2002) ("[Plaintiff] believes such a
construction by the court to be unnecessary because `a rod is a
rod.' The court agrees and believes the proper construction of
rod to be self-evident."); ASM Am., Inc. v. Genus, Inc.,
260 F. Supp.2d 827, 850 (N.D. Cal. 2002) ("The Court agrees with
[plaintiff] that there is no better way to define `generally
circular' than to simply say `generally circular.' Accordingly,
the Court declines to construe the term.").
The Court construes "feedback signal" as discussed above. See
supra Part II.B.1.
The following construction is adopted: "Deciding whether an
operating characteristic should be scaled from a first level to a
second level based on the feedback signal from the receiver."
6. "Generating a feedback signal based on said OFDM signal and
providing said feedback signal to dynamic control circuitry that determines whether an operating characteristic of OFDM symbols
should be changed based on said feedback signal" (Claim 15)
This phrase raises the same issues as discussed previously.
Accordingly, and for the same reasons, the Court adopts the
following construction: "The receiver generates a feedback signal
based on a received OFDM signal and provides that feedback signal
to control circuitry that decides whether at least one of the
operating characteristics should be changed during operation
based on that feedback signal."
7. "Said system comprising dynamic control circuitry which
receives a feedback signal from a receiver, determines whether an
operating characteristic of said method should be scaled from a
first level to a second level based on said feedback signal"
(Claim 21)
Again, this phrase raises the same issues as discussed
previously. Accordingly, and for the same reasons, the Court
adopts the following construction: "The transmitting device
comprises control circuitry that receives a feedback signal from
a receiving device and decides whether an operating
characteristic should be scaled during operation from a first
level to a second level based on that feedback signal."
C. '786: ORTHOGONAL FREQUENCY DIVISION MULTIPLEXING SYSTEM
WITH SELECTABLE RATE
The '786 patent is directed at methods of transmitting radio
signals in an OFDM-based wireless network. Information is
transmitted via radio waves in groupings called
"symbols."*fn11 Often, the waves ricochet and "overlap" as
they travel, causing undesired interference in the transmission,
known as "noise." The '786 patent teaches that the amount of
noise can be reduced by: (a) inserting a guard time interval
between the transmission of subsequent OFDM symbols; and (b)
employing "signaling modes" wherein the durations of both the
"information-carrying symbol" and the guard time are multiplied
by a certain integer. The '786 patent also describes an OFDM
transmitter, which is comprised of, inter alia, a "prefix and
window circuit."
1. "Information-carrying symbol(s)" (Claims 1, 7)
Neither of the parties claims that the phrase
"information-carrying symbols" had a customary meaning in the
field of OFDM technology at the time this patent was filed and
neither purport to have found the phrase "information-carrying
symbol" in a dictionary.*fn12 Accordingly, the Court looks
to the intrinsic evidence, beginning with the claim language
itself. See Vitronics, 90 F.3d at 1582.
The descriptive phrase "information-carrying" modifies the word
"symbol" in the claim language. The parties' disagreement
concerns how this modifying phrase limits the meaning of
"symbol." Agere contends that the phrase "information-carrying"
distinguishes between symbols and guard intervals.*fn13 (R.
at 98 (May 7, 2004).) According to Agere's expert, Dr. Goodman,
the term "symbol" alone may refer to both the guard time and the
informational portion of the symbol together or to the
informational portion of the symbol alone. (Goodman Rep. ¶ 58.)
Therefore, the prefix "information-carrying" was added to the term "symbol" in this
patent to narrow the patent's reference to the informational
portion only. (Id. ¶ 58.) Dr. Goodman's argument, however, is
belied by the claim language itself. Claim 1 describes a
transmission scheme "wherein a guard time is interposed between
successive ones of said information-carrying symbols." (`786
patent, col. 4, ll. 59-60.) As the claim language explicitly
distinguishes between symbols and guard times, Agere's
construction would render the "information-carrying" modifier
superfluous. Thus, the phrase "informationcarrying" could not
have been intended to alleviate the ambiguity Agere suggests.
According to Broadcom's expert, Dr. Cox, the phrase
"information-carrying" is used to distinguish between the data
portion of the transmission and preamble symbols. Preamble
symbols are symbols sent by the transmitter before the data, or
"payload," portion of the transmission. They consist of known
symbols, based on a mathematical equation set out in the 802.11a
standard, that are used by the receiver to discern
characteristics of the communication channel. (Goodman Rep. ¶
54-55; R. at 95 (May 7, 2004).) The transmitter sends the
preamble symbols to the receiver, which runs an algorithm that
generates the same preamble symbols internally and then compares
those generated symbols with the received symbols in order to
discern whether the preamble was distorted as it traveled through
the communication channel. (Goodman Rep. ¶ 54-55; Cox Dep. at 76;
R. at 92-95 (May 7, 2004).) Once the receiver has determined
whether there are distortions in the channel, it takes that
distortion into account when evaluating subsequent receptions.
(Broadcom Resp. at 43.) With this background in mind, Dr. Cox
bases his construction on a technical dictionary's definition of
the term "information," which is "knowledge or intelligence
unknown to the receiver before its receipt."*fn14 (Cox Rep. at 41-42 (citing Cambridge
Dictionary of Science and Technology).) Because the preamble
portion of the packet only contains known values used to discern
the characteristics of the channel, and because "information" is
"unknown to the receiver before its receipt," Dr. Cox concludes
that it is axiomatic that the phrase "information-carrying
symbols" does not include the preamble. (Id. at 42.)
The Court finds that Broadcom's proposed construction for the
modifier "informationcarrying" is consistent with the technical
dictionary definition noted above and, unlike Agere's proposal,
is also consistent with the use of the term in the claim
language. Therefore, Broadcom's construction is adopted, with the
exception of the reference to "packet," which is omitted for
reasons described in the next section. See infra Part II.C.2.
Accordingly, the following construction is adopted: "Symbol(s)
containing data, but not preamble symbols."
2. "Signaling modes" (Claims 1, 7)
The key issue regarding this term is whether a "signaling mode"
is always used to transmit a "packet of data," as Broadcom
suggests, or whether this construction would constitute an
improper limitation of the claim term, as Agere suggests.
Broadcom's expert, Dr. Cox, admits that this claim term does not
have a customary meaning in the field. (Cox Rep. at 44.)
Furthermore, the term "packet" cannot be found anywhere in the
claim language. Nonetheless, Broadcom draws support for its
limiting construction from two sources.
First, as noted above, this patent describes the transmission
of symbols of equal length. According to Dr. Cox, a person of ordinary skill in the art at
the time the '786 patent was filed "would understand packets of
data to contain data symbols of the same length in the payload
portion of the packet because in OFDM systems of that time,
symbol and guard time lengths were not generally changed in the
middle of the transmission of a packet of data." (Cox Rep. at
45.) This statement, however, employs questionable logic. Even
assuming that a person of skill in the art would understand a
"packet" to consist of data symbols of equal length, this does
not compel the conclusion that a claim describing the
transmission of data symbols of equal length must necessarily
describe the transmission of a packet. Accordingly, the disputed
claim term will not be limited on this basis.
Second, Broadcom draws support for its limitation from the
description of the preferred embodiment in the specifications:
In the preferred embodiment of the present invention,
a first signaling mode (the `normal' mode) uses
signal length T, a guard time TG and a set of N
sub-carriers and a second mode (the `fallback' mode)
uses a symbol length KT, a guard time KTG and the
same set of N sub-carriers, where K is an integer
greater than unity.
(`786 patent, col. 1, l. 66-col. 2, l. 4.) According to Dr. Cox,
one of ordinary skill in the art would understand the terms
"normal mode" and "fallback mode" to refer to the transmission of
an entire packet of data, rather than some subset of a packet.
(Cox Rep. at 45.) Even if Dr. Cox's opinion is accurate, however,
the terms "normal mode" and "fallback mode" are only found in the
description of one preferred embodiment. As Broadcom readily
admitted at the Markman hearing, this invention is not limited
to the preferred embodiment. (R. at 116 (May 7, 2004).)
Accordingly, the Court will not limit the claim term on this
basis. See Teleflex, 299 F.3d at 1328 ("To the extent that the
district court construed the term `clip' to be limited to the
embodiment described in the specification, rather than relying on the language of the claims, we conclude that the
district court construed the claim term . . . too narrowly.").
In conclusion, as the claimlanguage describes the transmission
of symbols, not packets, (`786, col. 1, ll. 62-63, col. 4, ll.
54-55, col. 5, ll. 21-23 (describing devices operating in one of
a "plurality of signaling modes in each of which the duration of
each information-carrying symbol is KT where K is a positive
integer" (emphasis added)), and as Broadcom has not provided a
persuasive reason to limit the claim term, the Court finds no
basis to accept the limitation Broadcom proposes. Although
Agere's proposed construction does not contribute greatly to an
understanding of the term, it is an accurate reflection of the
claim text, and therefore is adopted: "One of a plurality of OFDM
transmission modes."
3. "Prefix and window circuit" (Claim 11) and "Windowing
function" (Claim 25)
Broadcom argues that the claim language is limited such that
the "window circuit" and "windowing function" employ a gradual
roll-off pattern, which is one particular mathematical pattern of
windowing. In contrast, Agere suggests that no construction is
necessary because the claim language is broad and can refer to
any applicable pattern of windowing. The parties agree that the
plain and ordinary meaning of the general terms "window circuit"
and "windowing function" can refer to numerous mathematical
patterns, including, inter alia, rectangular, gradual roll-off,
and triangular shapes. (R. at 131 (May 7, 2004); Goodman
Supplemental Rep. ¶ 5 (stating that windowing function "can have
various shapes as long as it has finite duration").) Accordingly,
neither party suggests that these terms have a customary meaning
in the relevant art limited to a specific pattern. Therefore, in
order to determine whether Broadcom's proposed limitation is
warranted, the Court begins by looking to the intrinsic record to discern whether the
presumption of plain and ordinary meaning is rebutted.
The relevant claim language, located in claims 11 and
25,*fn15 sets up a three-step process whereby: (1) a data
stream is partitioned into groups of bits; (2) the bits pass
through an inverse Fourier transform circuit ("IFFT"); and (3)
the bits pass through a "prefix and window circuit," in the case
of claim 11, or are subjected to a "windowing function," in the
case of claim 25. (`786 patent, col. 5, ll. 51-67, col. 6, ll.
42-56.) On the basis of these claims, Broadcom presents two
arguments in favor of its proposed limitation. First, Broadcom
argues that the fact that the windowing occurs after the bits
pass through the IFFT compels its construction.*fn16
According to Broadcom, the symbol is already in a rectangular
shape when it leaves the IFFT block. (Cox Supplemental Rep. at
2.) Therefore, Dr. Cox suggests, "no specific windowing circuit
would be necessary if the symbol was to remain rectangularly
windowed." (Id.) Even if Dr. Cox's statement is accurate,
however, it does not compel the conclusion that a "gradual
roll-off" pattern must be utilized, as opposed to any other non-rectangular function, and Broadcom provides no support for
such a conclusion.
Second, Broadcom claims that the patentee explicitly defined
the term "windowing" in the specifications as employing a gradual
roll-off pattern:
To reduce spectral sidelobes, the cyclic prefixing
and windowing block . . . performs windowing on the
OFDM symbol by applying a gradual roll-off pattern to
the amplitude of the OFDM symbol.
(`786 patent, col. 3, ll. 58-61.) Contrary to Broadcom's
assertions, this quoted language does not constitute a clear
definition, but rather a description of one particular
embodiment. (Id., col. 3, ll. 32-33.) Therefore, it would be
inappropriate to import this limitation from the specifications
into the broader claim language. Brookhill-Wilk 1, 334 F.3d at
1301 ("Absent a clear disclaimer of particular subject matter,
the fact that the inventor anticipated that the invention would
be used in a particular manner does not limit the scope to that
narrow context.").
In conclusion, Broadcom has not provided convincing support to
limit the plain and ordinary meaning of the broad claim language.
Telegenix, 308 F.3d at 1202 ("[U]nless compelled otherwise, a
court will give a claim term the full range of its ordinary
meaning as understood by persons skilled in the relevant art.").
Nonetheless, the Court finds that some construction is necessary
to assist the eventual trier-of-fact. Accordingly, the Court
adopts a modified version of Broadcom's proposed
constructions.*fn17 "Windowing function" is construed as
"applying a pattern to the amplitude of the OFDM symbol at the
beginning and the end of the symbol." "Prefix and window circuit"
is construed as "a circuit that copies the last part of the OFDM
symbol and augments the OFDM symbol by prefixing it with the
copied portion of the OFDM symbol, and which also applies a
pattern to the amplitude of the OFDM symbol at the beginning and end of the
symbol."
D. '705: MODULAR PORTABLE DATA PROCESSING TERMINAL HAVING A
HIGHER LAYER AND LOWER LAYER PARTITIONED COMMUNICATION PROTOCOL
STACK FOR USE IN A RADIO FREQUENCY COMMUNICATIONS NETWORK
The '705 patent teaches a "portable terminal" consisting of a
"base module" and a "selected one of a plurality of communication
modules," with each communication module comprising a "module
processor," "module memory," and at least one of a plurality of
wireless "transceivers." The "selected" communication module is
"received" by the base module to enable the base module to
communicate with networks that use different communication
protocols. The "portable terminal" utilizes a "communication
protocol stack having higher and lower layers" that are
"specified by industry standards."
1. "Portable terminal" (Claims 1, 2, 10, 11, 12)
The key issue is whether this term is unambiguous and needs no
construction, as Broadcom contends, or whether it should be
construed to require that the terminal is "designed to be carried
by or on a person," as Agere proposes. The limitation that Agere
propounds is derived from Webster's II New College Dictionary and
certain embodiments in the specification. The Webster's
definition cited by Agere, however, does not include any
reference to how or by whom the terminal should be carried.
WEBSTER'S IINEW COLLEGE DICTIONARY 860 (1999) (defining
"portable" as "easily carried or moved"). Furthermore, Agere's
own expert, Dr. Goodman, does not support its proposed
limitation, testifying in his report that one of ordinary skill
in the art would understand the term "portable terminal" to mean
"a terminal that is easily carried or moved." (Goodman Rep. ¶
65.) In addition, although the specifications describe
"hand-held" devices (`705 patent, col. 2, ll. 22-26, col. 7, ll. 31-36, Fig. 25), Agere's proposed limitation would violate
the canon of claim construction that claim language is not
limited to the embodiments described in the specification. See
Teleflex, 299 F.3d at 1328; Comark Communications, Inc. v.
Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998) (cautioning
against limitation of claimed invention to preferred or specific
embodiments or examples). The Court agrees with Broadcom's
expert, Dr. Acampora, who testified that the term does not have a
technical definition but does have a plain and ordinary meaning
that is obvious to both persons skilled in the art and laypersons
alike. (Acampora Rep. at 39.) As the Court finds no basis to
limit this term's obvious, plain, and ordinary meaning, the Court
holds that the term "portable terminal" does not require
construction.*fn18
2. "Communication module" (Claims 1, 2, 10, 11, 12)
The debate over this claim term concerns Agere's proposed
construction of a "module" as "as self-contained" unit. This
language is found in the definition of "module" in Webster's II
New College Dictionary, and Broadcom does not object to it per
se.*fn19 Broadcom asserts, however, that if the modifier
"self-contained" connotes the ability to function independently,
then it is inaccurate and in conflict with the claim language.
As the claim language makes clear, this patent describes
removable, interchangeable modules that can function only when
assembled into the base module. (See '705 patent, col. 38, ll.
26-27 ("[T]he base module receiving the selected one of the plurality
of communication modules in an assembled position.").) The
"communication module," as this term is used in the '705 patent,
is not an independently-functioning entity but rather a component
that, once inserted into the base module, enables communication
between the base processor and a wireless transceiver. (Id.,
col. 38, ll. 30-36.) Furthermore, the specification describes
instances in which the communication module may access and
utilize external components in the receiving device in order to
function. (See, e.g., id. col. 4, ll. 8-12 (teaching that
communication module, after having been inserted into receiving
device, may connect to external antenna located within the
receiving device), col. 32, ll. 21-33 (describing embodiment
wherein radio card accesses antenna in receiving device).)
Finally, Agere's expert, Dr. Goodman, confirmed at the Markman
hearing that his inclusion of the term "self-contained" in the
construction was not meant to imply that the module was able to
function independently, but rather that "it's all within one
packaging of some sort." (R. at 269 (May 6, 2004).) Therefore,
the claim language, specifications, and expert testimony
demonstrate that the claimed "communication modules" do not
function independently. Thus, the Court will adopt the following
construction for communication module: "A self-contained assembly
of electronic components and circuitry used for the transmission
or reception of information. A communication module cannot
function independently."*fn20
3. "Module processor" and "Module memory" (Claims 1, 10, 11,
12)
As the parties' arguments regarding these two claim terms are
related, the Court addresses them in tandem. Agere proposes that
these terms should be construed as requiring physical attachment to the communication module, while Broadcom suggests
that they do not need construction at all. Looking to the claim
language for primary support, Agere asserts that "as a matter of
simple grammar, the modifier `module' signifies that the
processor belongs to the `communication module.'" (Agere's Resp.
at 12; Goodman Rep. ¶ 78 ("Because the word `module' is used to
modify the word `processor' in the claims, the `processor' is
clearly contained within the `communication module.'").) The
claim language itself and its grammatical construction, however,
do not require that the module processor and module memory be
physically attached to the communication module. The claim
language only requires that the communication module be
"compris[ed]" of, inter alia, a module processor and a module
memory. (`705 patent, col. 38, ll. 14-15 ("each communication
module comprising a module processor [and] a module memory"),
col. 39, ll. 8-9 (same).) A person of skill in the art would
understand that this relationship could be accomplished either by
physical attachment, or, alternatively, by an electrical
association. ...