From my3sons previous post regarding 151
From Judge Andrews the 151 patent
'151 PATENT
Claim 1 of the '151 Patent is representative and reads:
A method for utilizing channel assignment information for an uplink shared channel or a
downlink shared channel, the method comprising:
a wireless transmit/receive unit (WTRU) receiving downlink control
information including downlink or uplink channel assignment information
via a same physical downlink control channel, both downlink channel
assignment information and uplink channel assignment information being
received via the same physical downlink control channel;
the WTRU determining whether the downlink control information is intended
for the WTRU based on WTRU identity (!D)-masked cyclic redundancy
check (CRC) parity bits, and if so determining whether the channel
assignment information is for assigning radio resources for the uplink
shared channel or the downlink shared channel; and
the WTRU utilizing the radio resources for the uplink shared channel or the
downlink shared channel.
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(emphasis added).
A. "radio resources "
1. Plaintiffs' construction: "resources for uplink or downlink transmissions from or
to the WTRU"
2. Defendants' construction: plain and ordinary meaning or "physical resources for
uplink or downlink transmissions [from or to a WTRU]"
3. Court's construction: "physical resources for uplink or downlink transmissions
[from or to a WTRU]"
The Defendants argue that the only dispute is whether the term "physical" should be
incorporated into the claim construction. (D.I. 140 at 66). The Plaintiffs state that, "There
appears to be no genuine dispute among the parties with regard to the construction of this term
standing alone." !d. Furthermore, at oral argument both parties agreed that a "radio resource"
must be "physical." (D.I. 225 at 75, 76). The Court agrees with the parties that a "radio
resource" must be a "physical resource" and therefore adopts the Defendants' proposed claim
construction as it properly captures the "physical" requirement of the disputed term.
B. "[a/the] same physical downlink control channel"
1. Plaintiffs' construction: "a radio resource used to transmit uplink and/or downlink
channel assignment information"
2. Defendants' construction: "[a/the] channel used for transfer of downlink control
information only that occupies a same radio resource defined by a channelization
code"
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3. Court's construction: "[a/the] channel used only for transfer of downlink control
information that occupies a same radio resource"
The Defendants argue that their construction is necessary as it highlights the requirement
"that the channel at issue be the 'same physical' channel in that it occupies the same radio
resource." (D.I. 140 at 52). To support this argument, the Defendants cite to the'151 Patent's
prosecution history and the Patent's specification. !d. at 52, 53. Furthermore, the Defendants
argue that the construction should require that the channel be "defined by a channelization code."
!d. at 53. The Defendants argue that the '191 Patent's specification requires this construction
because it ties the "present invention ... to the WCDMA standard .... " !d.
The Plaintiffs argue that it is not necessary to construe this claim to require a "physical"
component, as this is encompassed within the construction of the term "radio resource." Further,
the Plaintiffs argue that it is inappropriate to limit the claim to "channelization code[ s ]" as the
'151 Patent states that '" [ t ]he present invention is applicable to any type of wireless
communication system such as ... CDMA in general or any other type of wireless
communication system."' !d. at 55 (quoting the '151 Patent at 3 :4-9) (emphasis omitted, ellipsis
in original).
The Court agrees with the Plaintiffs that including the phrase "channelization code" adds
a limitation to the claim that is found in neither the claim nor the specification. Thus, its
inclusion in the claim construction would be inappropriate. However, the Court does find that
the Plaintiffs' proposed construction broadens the scope of the claim to include uplink channel
assignment information, which is absent from the claim language. Therefore, the Court finds
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that the proper construction of the disputed phrase is the Defendants' construction, without the
reference to channelization codes.
C. "utilizing the radio resources for the uplink shared channel or the downlink shared
channel"
1. Plaintiffs' construction:
As used in claim 1: "using the assigned radio resources for the uplink or downlink
shared channel"
As used in claim 16: "the controller is configured to use the assigned radio resources
for the uplink or downlink shared channel"
2. Defendants' construction: "either transmitting data on the uplink shared channel
or receiving data on the downlink shared channel depending on whether the
assigned radio resources are for the uplink shared channel or downlink shared
channel"
3. Court's construction:
As used in claim 1: "either transmitting data on the uplink shared channel or receiving
data on the downlink shared channel"
As used in claim 16: invalid as indefinite
The Court will first address the construction of the phrase as found in claim 1 of the '151
Patent. The Plaintiffs argue that their proposed construction of the claim terms are consistent
with the plain meaning. (D.I. 140 at 57). However, the Plaintiffs agreed during the Markman
Hearing that the Defendants' proposed construction would be unobjectionable if the portion
after, and including the word, "depending" was not adopted. (D.I. 225 at 103). Therefore, the
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only remaining dispute for the Court is whether the phrase should be construed to contain the
"depending" clause.
The Defendants argue that the "depending" clause is necessary as it properly reflects the
order in which the action must be accomplished. (D.I. 140 at 58). In support of this argument,
the Defendants cite to both the Patent's abstract and to Fig. 3. (D.I. 140 at 58). The '151
Patent's abstract states, "The WTRU takes an appropriate action based on whether the message
is for assigning radio resources to the UL channel or the DL channel." The Plaintiffs argue that
there is no timing requirement in the claims, and it would be inappropriate to read such a
limitation into them. The Court agrees. There is no requirement in the claim that data may not
be received until after a channel assignment has been made. Furthermore, it would be
inappropriate to read such a requirement into the claim, as there was no clear disclaimer of this
claim scope. Therefore the Court construes the phrase, in the context of claim 1 of the '151
Patent, to be "either transmitting data on the uplink shared channel or receiving data on the
downlink shared channel."
Turning to claim 16 of the ' 151 Patent, the Defendants argue that the claim is indefinite
"because a person of ordinary skill in the art at the time of the purported invention would not
have understood whether claim 16, an apparatus claim, requires utilizing the radio resources (a
method step) or having a controller configured to utilize the radio resources (a device
capability)." (D.I. 140 at 58). The Plaintiffs argue that a person of ordinary skill in the art would
understand that the term "utilizing" meant "to utilize" in the context of the claim. Jd. at 60. The
Plaintiffs further argue that '" [ u ]tilizing' in claim 16 is essentially a typographical error which
the Court may correct." Jd.
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A claim is "not sufficiently precise" under section 112 when the claim is drafted as both
an apparatus and a method claim. IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377,
1384 (Fed. Cir. 2005). Furthermore, a Court "may not redraft claims, whether to make them
operable or to sustain their validity." Rembrandt Data Technologies, LP v. AOL, LLC, 641 F.3d
1331, 1339 (Fed. Cir. 2011). The Federal Circuit has held that a district court may only correct a
claim if"(l) the correction is not subject to reasonable debate based on consideration of the
claim language and the specification and (2) the prosecution history does not suggest a different
interpretation of the claims." Rembrandt Data Technologies, 641 F.3d at 1339. While the
Federal Circuit has found it appropriate to correct a missing comma in a claimed chemical
formula, because the party had proven that without the comma the formula did not represent any
known mineral, Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F.3d 1339, 1353
(Fed. Cir. 2009), the Federal Circuit has also indicated that correcting an apparatus claim that
includes an improper method step is not permissible. Rembrandt Data Technologies, 641 F .3d at
1339. Here, the Plaintiffs ask the Court to rewrite a method step in an apparatus claim to
preserve its validity. The Court finds that this correction is subject to reasonable debate and
therefore will not redraft the claim. Therefore, claim 16 of the '151 Patent is indefinite.
D. "channel assignment information"
1. Plaintiffs' construction: "information regarding radio resource assignment for the
uplink or downlink channel"
2. Defendants' construction: This term should be given its plain and ordinary
meaning, but, to the extent a construction is necessary, Defendants propose
"information identifying a channel assigned to the WTRU"
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3. Court's construction: "information identifying a channel assigned to the WTRU"
The Plaintiffs argue that their proposed construction is consistent with the claim language
and the specification. (D.I. 140 at 61). The Plaintiffs cite to a portion of the specification that
states, "[T]he present invention is related to a method and system for providing channel
assignment information to support uplink and downlink transmissions." Id. The Plaintiffs argue
that this passage "signals that this disclosure applies to the invention as a whole, and not merely
to an embodiment." Jd. The Defendants respond that during the prosecution of the parent patent
of the' 151 Patent, "the applicants argued that [the prior art reference] did not disclose channel
assignment information because [the prior art reference] disclosed dedicated channels, which
have static channel assignments. The applicants explained that the claims required shared data
channels, which are 'dynamically adjusted."' Jd. at 62. Furthermore, the Defendants argue that
the Plaintiffs' proposal improperly expands the scope of the claim as it allows for any
information to be transmitted, not only information that identifies the assigned channel.
The Court agrees with the Defendants. The Plaintiffs' proposed construction improperly
expands the scope of the patent. Furthermore, the Defendants' proposed construction is
consistent with the plain reading of the claim and the prosecution history of the '151 Patent.
Therefore, the Court will adopt the Defendants' proposed construction.
AI
