HTC CORPORATION v. IPCOM GMBH CO., KG (D.D.C. 8-25-2010)

HTC assails the lack of any real description of what "[c]arrying out preliminary data signal processing" means and where it is performed. HTC contends:

The specification merely discloses that "this preprocessing" results in "[a] frequency correction value produced by the central control unit 31." ['216 Patent at 7:63-8:2]. The specification further discloses that, as a result of this unknown "processing," the frequency correction value "completely eliminates . . . any impairment of error-free decoding in the case of frequency shifts exceeding 200 Hz." [ Id.] Thus, the `216 patent only describes the goal of substep (2.2) — an ambitious goal at that. But neither the `216 patent nor the claims specifies [sic] what acts implement that goal. . . . [T]he acts claimed by substep (2.2) are impossible to discern.

HTC's Reply [Dkt. # 156] at 24. In the alternative, HTC proposed that the phrase be construed as "preprocessing a data signal to generate a frequency correction value to be used in further signal processing of that data signal." Chart at 3. IPCom proposes that the phrase means, "preprocessing data signals to account for frequency shifts during communication." Id.

The Court disagrees with HTC's contention that the phrase is incapable of construction. As the specification discloses, preliminary data signal processing is performed by the central control unit 31 when it analyzes the actual, or real-time, frequency signal received from the base station and produces a frequency correction value to the synchronization processor 28. Using that frequency correction value, the synchronization processor 28 can then perform whichever synchronization step the central control unit 31 orders. Because the central control unit 31 supplies a frequency correction value for each step of synchronization, frequency shifts do not impair the cell phone's ability to decode the signals it receives.

The Court construes "(2.2) carrying out preliminary data signal processing" to mean "measuring the actual frequency from the base station and calculating a frequency correction value for use by the synchronization unit."

9. "(3.2) Conducting a fine frame synchronization with fine frequency synchronization"

This phrase is the second step of extended synchronization, which "provide[s] synchronization of a mobile radiotelephone to neighboring cells of a cellular mobile radio communication system as a cell boundary is approached and crossed." `216 Patent at 8:5-7. By this process, "it is basically assured that upon leaving one radio cell the base station of that cell will not interfere with the continuation of the connection." Id. at 8:15-17. In other words, this process ensures that the on-going telephone call will not be dropped because the user is changing cell towers. Extended synchronization is provided as a "background procedure (process having lower priority) which produces the necessary synchronization parameters (frame and frequency shift) for the nearby cell in contemplation of a crossing from one cell to another." Id. at 8:21-27.

In particular, the synchronization procedure during normal operation performs a coarse frame synchronization (frequency burst beginning) and a fine frame synchronization with fine frequency synchronization in which the synchronization burst 13 is used for the frame and frequency synchronization.

The relevant algorithms for the above steps correspond essentially to those designated 1.2, 1.3, 1.4 and 2.1 above, although more bits are involved in the extended training sequences.

Id. at 8:27-37.

HTC construes substep (3.2) to mean, "controlling a process that, by evaluating each of a neighboring cell's synchronization bursts, produces both frame and frequency shift synchronization parameters for that burst in contemplation of crossing a cell boundary." Chart at 3. IPCom, in contrast, asserts that the limitation means "controlling a process to bring the mobile station and neighboring base station's frame timing in step within a desired operating accuracy while bringing the mobile station and neighboring base station's frequency in step within a desired operating accuracy, such as by producing frame shift and frequency correction parameters." Id.

The specification for the `216 Patent provides, "The relevant algorithms for [extended synchronization] correspond essentially to those designated 1.2, 1.3, 1.4, and 2.1 above, although more bits are involved in the extended training sequences." `216 Patent at 8:34-37. Since the two steps for extended synchronization "correspond essentially" to steps 1.2, 1.3, 1.4, and 2.1, the construction of the terms should also correspond. Accordingly, the Court construes "(3.2) conducting a fine frame synchronization with fine frequency synchronization" to mean "controlling a process to monitor and maintain the frame timing in step between the mobile station and neighboring base station while also maintaining the frequency within a desired operating accuracy between the mobile station and the neighboring base station, by producing frame shift and frequency correction parameters when crossing a cell boundary."

B. The `751 Patent

The `751 Patent is titled, "Method of Allocating Access Rights to a Telecommunications Channel to Subscriber Stations of a Telecommunications Network and Subscriber Station." "The invention is based on a method of controlling or administering access to a telecommunications channel for a subscriber station." `751 Patent at 1:9-11. The method disclosed by the `751 Patent involves sending information signals containing access authorization data from a base station to a subscribed cell phone; upon receipt by the cell phone, its "evaluation unit" determines whether the access authorization data include an access threshold value; if so, the access threshold value is compared with a random number or a pseudo-random number; access to the telecommunications channel is granted "as a function on [sic] the outcome of comparison, preferably on the condition that the random number or pseudo-random number is greater than or equal to the access threshold value." Id. at 1:23-35. If the comparison fails, access to the telecommunications channel is denied and the subscribed cell phone must await new information signals.

The terms of Claim Thirteen of the `751 Patent are the only ones in contention here. Claim Thirteen reads:

A subscriber station to which an [sic] access to at least one telecommunication channel usable by a plurality of subscriber stations in common can be granted, comprising means for receiving information signals; an evaluation unit (60) for asking when information signals with access authorization data means (65) as authorization data (45, 50, 55) are received, whether the access authorization data (45, 50, 55) include an access threshold value (S) for comparison of the access threshold value (S) with a random number or a pseudo-random number (R), and for ascertaining, as a function of an outcome of a comparison whether an access of the at least one subscriber station (5, 10, 15, 20) to the at least one telecommunications channel is enabled.

Id. at 14:19-32. In plainer English, the `751 Patent discloses a cell phone with potential access to a telecommunications channel to which other cell phones have access; the cell phone receives information signals from the base station; the cell phone has an evaluation unit which asks whether access authorization data received by the cell phone contain an access threshold value to compare with a random number, and then ascertains, based on the comparison, whether access is enabled.

1. "Means for receiving information signals"

Both parties agree that this term is a "means-plus-function" term subject to the requirements of paragraph 6 of 35 U.S.C. § 112. That provision of the Patent Act states:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

35 U.S.C. § 112, ¶ 6. "Determining whether a claim is definite requires an analysis of whether one skilled in the art would understand the bounds of the claim when read in the light of the specification. If the claims read in light of the specification reasonably apprise those skilled in the art of the scope of the invention, § 112 demands no more." Personalized Media Communications, LLC v. Int'l Trade Comm'n, 161 F.3d 696, 705 (Fed. Cir. 1998). In other words, when a claim is expressed in means-plus-function language and it does not recite definite structure in support of its function, the claim must be construed to cover that which is described in the specification and equivalents. Medtronic, Inc. v. Advanced Cardiovascular, 248 F.3d 1303, 1311 (Fed. Cir. 2001). "The first step in construing such a limitation is a determination of the function of the means-plus-function limitation. The next step is to determine the corresponding structure described in the specification and equivalents thereof." Id. (citations omitted); accord Lockheed Martin Corp. v. Space Systems/Loral, Inc., 324 F.3d 1308, 1318 (Fed. Cir. 2003). If no corresponding structure is described in the specification or equivalent and one skilled in the art would not understand the bounds of the claim by reading the specification, a claim that recites a means-plus-function element without setting forth a structure is indefinite. See Halliburton, 514 F.3d at 1249; Personalized Media, 161 F.3d at 705.

HTC describes the specified function as "[d]igitizing a received signal (25) and parsing out access authorization data (45, 50, 55) to pass to the evaluation unit (60)." Chart at 3. HTC argues, however, that the structure remains improperly indefinite because none is disclosed in the specification, contrary to the requirements of paragraph 6. IPCom contends that the function at issue is "receiving information signals." Chart at 3; see Medtronic, 248 F.3d at 1311 (the function of "means for connecting adjacent elements together" is "connecting adjacent elements together"). IPCom asserts that the corresponding structure is a transceiver or its equivalents. The specification backs up IPCom's assertion. "The first mobile station 5, by means of its transceiver unit 65, receives the information signals . . ." `751 Patent at 5:16-17.

HTC also contends that this claim fails to meet the definiteness requirement of paragraph two of 35 U.S.C. § 112.

The specification explains that it only describes the first mobile station, but that the second, third, and fourth have the same construction. `751 Patent at 5:11-16.

The Court agrees with IPCom. "Means for receiving information signals" has a function (receiving information signals) and a structure (a transceiver or its equivalents) and thus is not indefinite.

2. "Evaluation unit"/"Evaluation unit for asking when . . ., whether. . . . "

IPCom neatly says that the `751 Patent's evaluation unit is simply a microprocessor. Chart at 4. Therefore, it does not agree with HTC that this claim limitation is written as a means-plus-function element subject to paragraph 6 of 35 U.S.C. § 112. HTC argues that the function is ambiguous because it is subject to multiple interpretations due to grammatical errors, and its structure is indefinite for failure to disclose such structure in the specification.

Again, the Court concludes that IPCom presents the much more compelling and logical construction, given the Claim, the specification and what would be known to one skilled in the art. "[A] claim term that does not use `means' will trigger the rebuttable presumption that § 112 ¶ 6 does not apply . . . the presumption flowing from the absence of the term `means' is a strong one that is not readily overcome." Lighting World, Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004).

Here, the claim does not use the term "means" and HTC has not rebutted the presumption that it is not a means-plus-function term. Moreover, even if it were such a term, the specification describes the corresponding structure. Figure 2 of the `751 Patent shows a mobile station (5) with a transceiver (65), and evaluation unit (60), antenna (70), and subscriber identity module (SIM) card (75). `751 Patent, Fig. 2. The evaluation unit connects to the transceiver and accesses the SIM card. Id. at 5:4-10 ("The transceiver unit 65 is also connected to an evaluation unit 60, which accesses an access authorization card 75, such as a SIM card.") It has memory, id. at 6:60, and performs the steps set forth in Figures 4a-4c of the Patent, determining for example whether certain data is in the received signals, obtaining a value from the SIM card or memory, drawing a random number, and comparing values. Id. at 8:63-10:10. This description of the evaluation unit and its interaction with other components reveals that it is a microprocessor. Thus, the Court construes "evaluation unit" to mean a "microprocessor."

3. "Asking when information signals with access authorization data means (65) as authorization data (45, 50, 55) are received. . . ."

HTC contends that the phrase "an evaluation unit (60) for asking when information signals with access authorization data means (65) as authorization data (45, 50, 55) are received, whether the access authorization data (45, 50, 55) include an access threshold value (S)" is insolubly ambiguous and fails to comply with paragraph 2 of 35 U.S.C. § 112. Chart at 4; see '751 Patent at 14:23-27 (emphasis added). Section 112, paragraph 2, provides that the specification "shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112, ¶ 2. IPCom proposes that the limitation be construed to mean "the microprocessor is programmed to examine, after information signals having access authorization data have been received by the transceiver. . . ." Chart at 4.

While this claim limitation is clumsy, it can be construed. "Access authorization data means," is "a means to analyze access authorization data" to determine whether such data include an access threshold value for comparison with a random or pseudo-random number. In Figure 2 of the `751 Patent, 65 indicates a transceiver, and 60 is the evaluation unit or microprocessor. With this understanding, "an evaluation unit (60) for asking when information signals with access authorization data means (65) as authorization data (45, 50, 55) are received, whether the access authorization data (45, 50, 55) include an access threshold value (S)" means "a microprocessor for asking, when information signals with access authorization data are received by the transceiver, whether the access authorization data include an access threshold value. . . ."

4. "Asking . . . whether access authorization data (45, 50, 55) include an access threshold value (S) for comparison of the access threshold value (S) with a random or pseudo-random number (R)"

Within the context of the `751 Patent, HTC says that this clause is in plain English and needs no construction from the Court. IPCom suggests it means that "the microprocessor is programmed to examine . . . the access authorization data to identify an access threshold value for comparison of the access threshold value with a random (or pseudo-random) number." Chart at 4.

Since the inventors indicated that the microprocessor asks "whether" the data include an access threshold value, it must be anticipated that some access authorization data would not include an access threshold value, or at least not one that the microprocessor could recognize. Therefore, the Court rejects IPCom's use of the word "identify" because that verb presumes that there will always be an access threshold value subject to identification by the microprocessor. The remainder of IPCom's proposed construction unnecessarily restates the plain meaning of the limitation.

The Court finds that this phrase is construed according to its plain and ordinary meaning, and no further definition is required. "Asking . . . whether access authorization data include an access threshold value for comparison of the access threshold value with a random or pseudo-random number" means just what it says.

5. "Ascertaining as a function of an outcome of a comparison whether an access of the at least one subscriber station (5, 10, 15, 20) to the at least one telecommunications channel is enabled"

HTC contends that this clause should be construed mostly according to its plain meaning as "comparing (S) to (R) to determine whether access to the common telecommunications channel is allowed, or whether the subscriber station (cell phone) must wait for and check the next transmission of access authorization value." Chart at 5. IPCom asserts that it means, "the microprocessor is programmed . . . to determine, based on an outcome of a comparison of the access threshold value and the random (or pseudo-random) number, whether to authorize the particular subscriber station access rights to the common telecommunications channel." Id.

IPCom contends that HTC's construction improperly imports the concept of waiting for and checking the next transmission. But this concept is fully supported by the specification, which states, "[a]fter the end of the program, the mobile station informs the user that the access to the r30 was not possible, and waits for further inputs from the user. Alternatively, by means of a waiting loop embodied in the mobile station, the program is executed over again, so there is a wait for the next information signal with the next bit pattern, and the information signal is then evaluated. . . ." `751 Patent at 10:3-10; see also HTC's Resp. [Dkt. # 151], Ex. D. (Dep. of Martin Hans) at 175-76 (inventor testified that once the mobile station attempts to gain access and has been denied authorization, it will not immediately seek re-access).

The Court concludes that HTC's construction is the better one, as it more closely follows the claim terms and the specification. The phrase "ascertaining as a function of an outcome of a comparison whether an access of the at least one subscriber station (5, 10, 15, 20) to the at least one telecommunication channel is enabled" is construed to mean "comparing an access threshold value to a random or pseudo-random number to determine whether access to the common telecommunications channel is allowed or whether the subscriber station (cell phone) must wait for and check the next transmission."

6. "Access authorization data"

IPCom defines "access authorization data" as "access rights information that must at least include either (1) information indicating whether access is to be authorized based on an access threshold value or access class information, and at least one of an access threshold value or access class information or (2) access threshold value and access class information." Chart at 5. HTC asserts that this phrase means "bit patterns (45, 50, 55) which may include an access threshold value or alternatively different information from which the mobile station can determine whether it has access rights or must wait until access authorization data are transmitted again." Id.

The specification to the `751 Patent indicates that access to the RACH (random access channel), by which a plurality of mobile stations/cell phones communicates with a single base station/cell tower, can be restricted to "certain user classes" or each mobile station can "be provided with its own user class." `751 Patent at 4:14, 21. "User classes with different numbers of mobile stations can also be provided. . . . The network operator can now enable access to the RACH by the individual mobile stations as a function of their membership in one of the . . . user classes." Id. at 4:22-27. "By means of information signals," the network operator "informs the various mobile stations which rights for transmitting on the RACH are granted to the applicable mobile station." Id. at 4:32-36 (numerical references to Fig. 1 omitted).

At predetermined times, the base station transmits information signals to the first mobile station [as an example for all the mobile stations]. The information signals can be transmitted, as shown in FIG. 1, via a signaling channel 25, hereinafter embodied as an example as a broadcast control channel or BCCH. . . .

Since the bit pattern sent from the base station is sent not only to the first mobile station 5 but also to all the other mobile stations 10, 15, 20, and likewise over the signaling channel 25, which as described is embodied as a BCCH, that is, a point-to-multiple-point channel, so that all the mobile stations receive the same ink [i.e. information] at the same time, the bit pattern includes the access rights granted to each user class, 35, 40, for the sake of informing the mobile stations of the RACH access rights they have been allowed.

Id. at 4:41-45, 59-67. A random distribution of access authorization occurs because the base station also sends an access threshold value S. The access threshold value S is "delivered" to the evaluation unit in the mobile station. Id. at 5:19. Then, the evaluation unit "draws a random or pseudorandom number R and asks whether the random or pseudo-random number R is at least as great as the access threshold value S." Id. at 5:21-24. "Only then is an [sic] access to the r30 [RACH] allowed." Id. at 5:24-25.

However, some classes of users may be enabled to access the RACH even when, "on the basis of the random distribution by means of the access threshold value [such users] are not authorized access." Id. at 1:56-58. "For instance, subscriber stations of emergency services, such as the police or fire department are assigned to a predetermined user class of this kind and can then access the telecommunications channel with priority by means of appropriate access threshold value ink, independently of the random distribution." Id. at 1:59-64.

From these descriptions, it is evident that the term "access authorization data" represents two different kinds of information sent by a base station: access rights granted to each user class and an access threshold value unless the subscriber is, for instance, an emergency service in which event its user class has priority and its access threshold value is not dependent on random distribution. Notably, even emergency services must have both a user class and an access threshold value to gain access to the network.

HTC thus proposes that access authorization data is confined to three particular bit patterns described as preferred embodiments in the specification. There is nothing in the specification, however, that suggests that authorization data is limited to these three specific bit patterns. To the contrary, the specification expressly states that these three bit patterns are set forth as mere examples:

The numbers of bits used for the access threshold value S, the access channel [information] Z0, Z1, Z2, Z3, the priority threshold value P and the telecommunications service [information] D0, D1, D2 are understood to be merely examples, and they can also be increased, for example for more extensive signaling, and reduced, for the sake of bandwidth reduction. In this case, the total length of the bit patterns 45, 50, 55 may change as well. Individual components of the [information] can optionally also be omitted entirely.

`751 Patent at 8:54-62. Further, HTC's proposal that the bit patterns "may include an access threshold value or alternatively different information," Chart at 5, fails to appreciate that access authorization data include both access threshold values and access rights granted to each user class. Similarly, IPCom's proposed construction would present an either/or scenario: "information indicating whether access is to be authorized based on an access threshold value or access class information . . .," id., which is not consistent with the specification.

The Court construes "access authorization data" to mean "access rights granted to each user class and an access threshold value."

7. "Access threshold value"

HTC suggests "a numerical value optionally included in access authorization data that is transmitted at periodic intervals for controlling network access. If a mobile phone determines that the numerical value was transmitted, it will directly compare the value with a random/pseudo-random numerical value generated within the mobile phone to determine whether it can gain access rights or must wait until access authorization data are transmitted again." Chart at 5-6. IPCom offers "a value used to determine whether the subscriber station is authorized to access the common telecommunications channel." Id. at 5.

Part of HTC's definition states that "[i]f a mobile phone determines that the numerical value was transmitted, it will directly compare the value with a random/pseudo-random numerical value generated within the mobile phone to determine whether it can gain access rights or must wait until access authorization data are transmitted again." There is no need to import this limitation again here. It can be found in the "ascertaining" limitation discussed above. See Section III.B.5 of this Opinion. The Court adopts IPCom's straightforward definition: "access threshold value" is "a value used to determine whether the subscriber station is authorized to access the common telecommunications channel."

C. The `830 Patent

The `830 Patent is titled Method for Handover, Mobile Station for Handover and Base Station for Handover. It describes a method for handing over a link between a cell phone and a network from a first base station to a second base station of the same network. At the time of the `830 Patent, handover methods "require[d] that the backbone network be able to support the handover. However, in the future this cannot be taken for granted, as a number of different backbone networks may be connected. . . . [T]he present invention has the advantage that handover is also possible with networks in which communication between individual base stations is limited." `830 Patent at 1:57-2:3.

The inventors defined some of their terms in the specification:

Soft handover: Handing off without the loss of individual data.

Hard handover:

Handing off in which individual data are lost.

Forward handover: The mobile station seeks its target base station itself and registers there directly.

Backward handover: The mobile station registers HO [handover] at the old base station, which then performs the search for a suitable new base station.

Non-network supported: (forward HO only) When registering at the new base station, the mobile station itself is responsible for ensuring that all link parameter settings and link settings are modified.

Network supported: The network ensures that the two base stations involved can communicate directly. In this case, the old base station sends the new base station all relevant information regarding the mobile station and its links.

Mobile-station-initiated handover: The mobile station determines that an HO is required and initiates this process.

Base-station-initiated handover (forced HO): The base station wants to free up capacity or it determines that the radio link is deteriorating and informs the MS [mobile station] that it is to carry out an HO.

Id. at 1:34-57.

The `830 Patent proposed "[n]ew methods that solve some of the existing problems relating to forward HO." Id. at 2:24-25. "The first method allows network-supported and non-network-supported handover. The second method allows base-station-initiated and forward HO to be combined." Id. at 2:25-28. "The first part of the present invention allows a type of handover to be implemented that can be performed without network support" or with network support if the network is capable of providing support, which the network indicates by sending an additional signal from the base station. Id. at 2:33-36. "The second part relates to a method in which a forced forward HO is performed for which it is much less likely that the [mobile station] will have to clear its link." Id. at 2:39-41.

Claim One claims:

A mobile station for use with a network including a first base station and a second base station that achieves a handover from the first base station to the second base station by:

storing link data for a link in a first base station,

holding in reserve for the link resources of the first base station, and

when the link is to be handed over to the second base station:

initially maintaining a storage of the link data in the first base station,

initially causing the resources of the first base station to remain held in reserve, and

at a later timepoint determined by a fixed period of time predefined at a beginning of the handover, deleting the link data from the first base station and freeing up the resources of the first base station, the mobile station comprising:

an arrangement for reactivating the link with the first base station if the handover is unsuccessful.

`830 Patent at 8:12-32. Claim Eighteen is almost identical to Claim One.

Claim Eighteen, `830 Patent at 10:61-12:6, is identical to Claim One, id. at 8:12-32, except that the phrase in Claim One that states, "at a later timepoint determined by a fixed period of time predefined at a beginning of the handover, deleting the link data from the first base station and freeing up the resources of the first base station. . . ." is modified in Claim Eighteen to state, "at a later timepoint determined based on a message from one of the mobile station and the second base station regarding a successful completion of handing over the link, deleting the link data from the first base station and freeing up the resources of the first base station. . . ." Compare '830 Patent at 8:25-28 (Claim One) with id. at 11:7-12:4 (Claim Eight).

1. "Arrangement for reactivating" (Claims 1 and 18)

The parties are in agreement that the term "arrangement for reactivating" is a means-plus-function term that is subject to the requirements of paragraph 6 of 35 U.S.C. § 112, which requires each described function to also have a structure. The function of "arrangement for reactivating" is "to recommence communications with the first base station over the traffic channel that already was allocated and used prior to the handover attempt" (as asserted by HTC) or, more briefly, "to reactivate the link with the first base station if the handover is unsuccessful" (as described by IPCom). As explained previously, when a claim is expressed in means-plus-function language and it does not recite a definite structure in support of its function, the claim must be construed to cover that which is described in the specification and equivalents, Medtronic, 248 F.3d at 1311, and if one skilled in the art could not determine the bounds of the claim by reading the specification and equivalents, the claim is indefinite. See Halliburton, 514 F.3d at 1249.

HTC asserts that this claim is indefinite under paragraphs two and six of § 112. "[C]lear and convincing evidence that a skilled artisan could not discern the boundaries of the claim based on the claim language, the specification, and the prosecution history, as well as [the accused infringer's] knowledge of the relevant art area" is required to find a claim invalid on indefiniteness grounds. Halliburton, 514 F.3d at 1249-50. HTC fails to meet this standard.

An analysis of whether one skilled in the art would understand the bounds of the claim when read in the light of the specification is necessary to determine whether a claim is definite. See Personalized Media, 161 F.3d at 705. "If the claims read in light of the specification reasonably apprise those skilled in the art of the scope of the invention, § 112 demands no more." Id. Thus, the question is whether the "arrangement" is either identified or obvious to one skilled in the art.

In considering whether a claim term recites sufficient structure to avoid application of section 112 ¶ 6, we have not required the claim term to denote a specific structure. Instead, we have held that it is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function.

. . . .

Thus, while it is true that the term "connector assembly" does not bring to mind a particular structure, that point is not dispositive. What is important is whether the term is one that is understood to describe structure, as opposed to a term that is simply a nonce word or a verbal construct that is not recognized as the name of structure and is simply a substitute for the term "means for."

Lighting World, 382 F.3d at 1359-60.

IPCom says that the structure represented by the "arrangement for reactivating" is "a processor connected to a transceiver and programmed to formulate and send messages to reactivate the link, if the handover is unsuccessful." Chart at 6 (citing `830 Patent at 6:30-44; 7:48-52; 7:65-83; Fig. 1 Fig. 5 (steps 406-410)). IPCom argues that one skilled in the art would understand what is "plainly understood to be present in a mobile station" and that "the descriptions in the patent of receiving messages over a radio link ( see, e.g., . . . Fig. 1; 1:20-21), interpreting the messages (Figs. 2-6; 6:34-36), making decisions based on the messages (Fig. 5; 6:37-38), formulating messages based on the decisions (Fig. 5; 6:37-38), and sending messages back over a radio link (Fig. 5, ref. 408; 6:37)" would indicate to one skilled in the art the required transceiver and properly programmed processor. IPCom's Resp. [Dkt. # 150] at 49. HTC's expert, Dr. Christopher Rose, conceded this point:

Indeed, Dr. Rose's concessions that a mobile station "has to be able to talk to the network so you've got to have a transceiver" and would be understood to have "some sort of processor. Something has to handle the data" ends this dispute as they establish exactly the same point IPCom made in opening — skilled persons would understand the specification to disclose sufficient structure. (Ex. 160B at 15:25-16:14.) Dr. Rose's concessions are devastating to HTC's position.

Id.

The Court agrees. The word "arrangement" by itself has no common or special meaning that one skilled in the art of telephony would know meant a processor and transceiver. But in the context of the `830 Patent and the art, the Court has no doubt that one skilled in the art would immediately deduce that a processor with a transceiver was the structure indicated by the term. The Court construes "arrangement for reactivating" in Claims 1 and 18 as meaning "a processor connected to a transceiver and programmed to formulate and send messages to reactivate the link, if the handover is unsuccessful."

2. "Mobile station . . . that achieves a handover by: storing . . . the mobile station comprising" (Claims 1 and 18)

Claims One and Eighteen recite a "mobile station for use with a network . . . that achieves a handover from the first base station to the second base station by: [performing six steps, including storing link data, holding link resources in reserve, and later deleting the link data], the mobile station comprising: an arrangement for reactivating the link with the first base station if the handover is unsuccessful." `830 Patent at 8:12-25 (Claim One); id. at 10:61-12:6 (Claim Eighteen). HTC contends that these Claims are indefinite under paragraph 2 of 35 U.S.C. § 112 — that they improperly denote both an apparatus (the mobile station) and six method steps (storing, holding, and later deleting). Paragraph 2 requires that the "specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112, ¶ 2. Further, § 2173.05(p)(II) of the Manual of Patent Examining Procedure provides that "a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. § 112, second paragraph." MPEP § 2173.05(p)(II) (8th ed., Aug. 2001, revised July 2010).

Again, a claim is indefinite only if the claim is insolubly ambiguous and no narrowing construction can be applied, Honeywell, 341 F.3d at 1338-39, and only when a person of ordinary skill in the art could not determine the metes and bounds of the claim. Halliburton, 514 F.3d at 1249. Clear and convincing evidence is required to find a claim invalid on indefiniteness grounds. Id. at 1249-50. HTC has met this burden.

A single patent may include claims directed to one or more of the classes of patentable subject matter, but no single claim may cover more than one class of subject matter. Microprocessor Enhancement Corp. v. Texas Instruments Inc., 520 F.3d 1367, 1374 (Fed. Cir. 2008). Thus, a claim covering both an apparatus and a method of using that apparatus is invalid for indefiniteness. IPXL, Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). In IPXL, the Federal Circuit examined a patent claim stating, " [t]he system of claim 2 [] wherein the predicted transaction information comprises both a transaction type and transaction parameters associated with that transaction type, and the user uses the input means to either change the predicted transaction information or accept the displayed transaction type and transaction parameters." IPXL, 430 F.3d at 1384 (emphasis in original). The court held that the claim was invalid for indefiniteness because it recited a system ("the system of claim 2") and a method step ("the user uses the input means"). The court deemed this language indefinite because it resulted in confusion as to whether

infringement would occur when someone created such a "system" or when a user actually used such "input means." Id. "[A]s a result of the combination of two separate statutory classes of invention, a manufacturer or seller of the claimed apparatus would not know from the claim whether it might also be liable for contributory infringement because a buyer or user of the apparatus later performs the claimed method of using the apparatus." Id. at 1384. The IPXL court held that the patent claim was invalid under section 112, paragraph 2, because it recited both a system and the method for using that system and thus it did not apprise a person of ordinary skill in the art of its scope. Id.; accord Ariba, Inc. v. Emptoris, Inc., No. 07-90, 2008 WL 3482521, at *6-7 (E.D. Tex. Aug. 7, 2008) (finding a patent claim indefinite and thus invalid because it covered an apparatus (a bidding device) as well as a method step ("wherein a bid submitted by the potential seller operating the bidding device is compared to the corresponding bid ceiling") (emphasis added)); see also Rembrandt Data Techs., LP v. AOL, LLC, 673 F. Supp. 2d 420, 426 n. 3 (E.D. Va. 2009) (parties agreed that an apparatus claim that included a method step was drafted in error).

Even though no single patent claim may cover more than one class of subject matter, a method claim is not necessarily indefinite when it uses structural language and an apparatus claim is not necessarily indefinite when it uses functional language. Microprocessor, 520 F.3d at 1374-75. For example, in Microprocessor the court found an apparatus claim to be valid even though it contained some functional language. The claim at issue recited, in part, "a pipelined processor for executing instructions comprising: . . . fetching means for fetching source operands specified by said operand specifiers; operating means for performing the operation specified by said opcode;. . . ." The court held that the claim was "clearly limited to a pipelined processor possessing the recited structure and capable of performing the recited functions" and was thus not indefinite under IPXL. Id. at 1375.

IPCom argues that Microprocessor applies, that the method steps in Claims One and Eighteen are mere functional language used to describe the apparatus itself. IPCom also relies on Intellect Wireless Inc. v. Kyocera Comm'ns, Inc., No 08C1350, 2009 WL 3259996, at *5 (N.D. Ill. Oct. 8, 2009), where the court rejected an allegation of indefiniteness. The patents at issue in Intellect Wireless claimed a "wireless portable communications device for use by a message recipient for receiving a picture from a message originator" including a "receiver" that is "operably coupled to receive a message from a message center over a wireless connection." Id. at *4. The claims described the message the receiver was capable of receiving as "the message including a non-facsimile picture supplied by the message originator and a caller ID automatically provided by a communication network that identifies the telephone number of the message originator, the message originator sending the caller ID with the picture to the message center." Id. (emphasis in original). The defendant contended that the italicized phrase recited a method step in an apparatus claim and was indefinite. The court rejected this argument, explaining that the alleged method language (1) did not directly relate to the functionality of the claimed apparatus and (2) described an act by a third party, the message originator, in sending a message to a message center. Id. at *5.

HTC relies on IPXL and Ariba and argues that Claims One and Eighteen of the `830 Patent are indefinite since they purport to cover an apparatus but also recite a list of steps for achieving handover from one base station to another. HTC's Opening Br. [Dkt. # 134] at 16. "The claim language does not clearly demarcate the invention, and a mobile station manufacturer is left to wonder whether infringement occurs when the mobile station is manufactured or when the mobile station performs the steps recited . . ." Id.

HTC has the better argument. The patent claim in Microprocessor was limited to a pipelined processor described as having certain structure to enable it to perform certain tasks, such as "fetching means for fetching source operands specified by said operand specifiers" and "operating means for performing the operation specified by said opcode." The functional language of the claim was intended to define and limit the recited structure. In contrast, Claims One and Eighteen of the `830 Patent recite an apparatus, a "mobile station," that achieves a handover from the first base station to the second base station by performing six method steps such as storing link data, holding link resources in reserve, and later deleting the link data. The claim describes the apparatus as actually performing the method steps; it does not merely define the apparatus as a structure has certain means enabling it to perform certain steps. The claim in the Intellect Wireless case is also distinguishable. There, the alleged method language did not directly relate to the functionality of the claimed apparatus at all. The method language instead described an act by a third party.

The prosecution history supports the assertion that Claims One and Eighteen are apparatus claims containing method steps. In response to the PTO Examiner's question regarding how the `830 Patent could be distinguished from prior art, the inventors relied on the method steps, the claimed process, as follows, "[T]he Examiner once again cites [the prior art reference] for teaching `a handover from the first base station to the second base station.' However, the cited section of [the prior art reference] clearly describes a process that is completely different from the claimed process: [The prior art reference] describes a so-called `semi-hard handoff,' which occurs within one and the same base station." HTC's Reply [Dkt. # 156], Ex. 1 (Oblon Decl.), Ex. C (Jan. 30, 2004 Resp. to Office Action at 8 (emphasis added)).

Claims One and Eighteen recite an apparatus and six method steps that the apparatus performs, directly relating to the functioning of the apparatus and not relating to any act performed by a third party. In sum, Claims One and Eighteen improperly claim both an apparatus and method steps and thus are indefinite and invalid.

3. "Link data" (Claims 1 and 18)

HTC asks that this term be construed and suggests that it means "the data required for a link that both the first base station and the mobile station are capable of sending to a second base station to achieve a handover." Chart at 6. IPCom offers "data describing the identity and features of the mobile station and the call in which the mobile station is engaged." Id.

Dr. Rose, HTC's expert, testified that link data is a "generic term" that would "describe a number of different types of information, including . . . a session link, a fixed link, a data rate or information regarding channelization, timing, timing offset, frequencies, etc." IPCom's Resp. [Dkt. # 150] at 52-53 (citing Rose Decl. ¶ 23). It is critical to transfer "connection information" as part of a handover. Id. (Rose Decl. ¶ 14). HTC errs by proffering a construction that defines the term by using the same term — " data required for a link" — and then focusing on its use, not its meaning. As a "generic term," "link data" covers many kinds of data necessary to maintain a call and necessary to a successful handover. "Link data" is construed to mean "data describing the identity and features of the mobile station and the call in which the mobile station is engaged."

4. "Holding in reserve . . .; Initially causing the resources of the first base station to remain held" (Claims 1 and 18)

Claim One states that what is claimed is a "mobile station for use with a network . . . that achieves a handover from the first base station to the second base station by: storing link data . . ., holding in reserve for the link resources of the first base station, and when the link is to be handed over to the second base station: . . . initially causing the resources of the first base station to remain held in reserve. . . ." `830 Patent at 8:12-25. HTC asks that the Court find this limitation incapable of construction because "holding in reserve" is indistinguishable from "initially causing the resources of the first base station to remain held." IPCom argues that "holding in reserve" means "temporarily keeping back resources of the first base station" and that "initially causing the resources of the first base station to be held" means "at least temporarily keeping back the resources of the first base station." Neither is correct.

What is claimed, of course, is a cell phone that works within a network that includes at least two base stations. Therefore, the actions of "holding" and "initially causing" must occur within the mobile station as it implements its handover algorithms, which are the focus of the `830 Patent and are described at length in the specification. The structure of the Patent makes it clear that the first base station responds to messages (signals) from the mobile station to "hold in reserve" certain resources and the mobile station "initially cause[s]" the first base station to continue to hold those resources in reserve during the actual handover to the second base station. Claim One states that what is claimed is a mobile station that achieves a handover in a network by "holding in reserve for the link resources of the first base station, and . . . initially causing the resources of the first base station to remain held in reserve. . . ." `830 Patent at 8:12-25 (emphasis added). These messages from the mobile station to the base station occur at slightly different times during a handover. The mobile station first causes the first base station to store link data and to hold resources in reserve for the link; ever so slightly later, "when the link is to be handed over to the second base station," the mobile station tells the first base station to maintain the storage of the link data and causes the resources of the first base station "to remain held in reserve" until a fixed period of time expires and then the link data is deleted from the first base station. See id. at 8:19-27.

Thus, HTC incorrectly argues that these are the same limitation. IPCom incorrectly gives them the same construction. "Holding in reserve" is construed to mean "causing a first base station to preserve resources for a link." "Initially causing the resources of the first base station to remain held in reserve" is construed to mean "causing a first base station to continue to hold link resources while a handover to a second base station is attempted."

5. "At a later timepoint determined by a fixed period of time predefined at a beginning of the handover" (Claim 1)

The full phrase of this limitation states: "at a later timepoint determined by a fixed period of time predefined at a beginning of a handover, deleting the link data from the first base station and freeing up the resources of the first base station. . . ." `830 Patent at 8:25-29. The specification explains:

It is therefore proposed that in the case of a handover the base station initially continue to hold the data and resources. To accomplish this a timer, for example, is started when the old base station asks the mobile station to look for a new base station (or when the mobile station confirms this). The base station holds the resources of the mobile station in reserve until it receives the request to redirect the links or until the timer runs out. During this time the mobile station has time to look for a new base station that is capable of carrying the traffic. If the search for a new base station is unsuccessful, the [mobile station] re-registers at its old [base station] and keeps its previous settings. If the [mobile station] does not [re-]register within the time defined by the timer the old base station frees up the resources and deletes the [mobile station] from its lists.

Id. at 7:41-54.

HTC proposes that the cited limitation be construed to be "the base station deleting the link data and freeing up the link resources if a predetermined time passes after the mobile station began searching for a new base station." This defines more than the limited phrase, quoted above. IPCom prefers, "when the time, which has been preset and initiated before handover, expires." The Court adopts IPCom's more limited definition. The phrase "at a later timepoint determined by a fixed period of time predefined at a beginning of a handover" means "when the time, which has been preset and initiated before handover, expires."

IV. CONCLUSION

The Claims of the Patents are deemed to have the meanings ascribed to them above. Further, HTC's Motion for Summary Judgment [Dkt. # 132] will be denied. A memorializing Order accompanies this Memorandum Opinion.