AGERE SYSTEMS, INC. v. BROADCOM CORPORATION

The opinion of the court was delivered by: BERLE M. SCHILLER, District Judge

MEMORANDUM & ORDER

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.

I. LEGAL BACKGROUND

  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.

  II. WIRELESS PATENTS

  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.

  1. "Grounded" (Claim 6)

  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

  2. "Different" (Claim 6)

  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.

  b. "determining that"

  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.").

  d. "feedback signal"

  The Court construes "feedback signal" as discussed above. See supra Part II.B.1.

  e. Conclusion

  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.

  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.

  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. ...