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Godo Kaisha IP Bridge 1 v. TCL Communication Technology Holdings Ltd.

United States District Court, D. Delaware

April 19, 2017

GODO KAISHA IP BRIDGE 1, Plaintiff,
v.
TCL COMMUNICATION TECHNOLOGY HOLDINGS LIMITED, a Chinese Corporation, TCT MOBILE LIMITED, a Hong Kong Corporation, TCT MOBILE US, INC., a Delaware Corporation and TCT MOBILE, INC., a Delaware Corporation, Defendants.

MEMORANDUM ORDER

         At Wilmington this 19th day of April, 2017, having heard argument on, and having reviewed the papers submitted in connection with, the parties' proposed claim construction;

         IT IS ORDERED that the disputed claim language of U.S. Patent Nos. 7, 373, 295 ("the '295 patent"), 8, 351, 538 ("the '538 patent"), and 8, 385, 239 ("the '239 patent") shall be construed consistent with the tenets of claim construction set forth by the United States Court of Appeals for the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), as follows:

         1. "Pulse vector:"[1] "A sequence of electrical pulses." The specification explains that the pulse vector generator generates "[pulse] vectors . . . each having a signed unit pulse[2] [] provided to one element on a vector axis." ('295 patent, 6:28-30) With reference to table 1, the specification describes a rule for generating pulse vectors with pulses located according to a position vector.[3] (Id., 6:46-49, table 1)

         2. "Pulse vector generator:"[4] § 112, ¶ 6 applies. Indefinite. When claim language does not employ the word "means, " the presumption is that § 112, ¶ 6 does not apply. Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). However, "the presumption can be overcome and § 112, ¶ 6 will apply if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function." Id. (citations omitted) (internal quotation marks omitted). Claim 1 recites:

         A dispersed pulse vector generator used for a speech coder/decoder, comprising:

a pulse vector generator configured to generate a pulse vector having a signed unit pulse;
a dispersion pattern storage configured to store a plurality of fixed dispersion patterns;
a dispersion pattern selector configured to determine a selected dispersion pattern of the plurality of fixed dispersion patterns with reference to an adaptive codebook gain; and
a dispersed pulse vector generator configured to generate a dispersed pulse vector by convoluting the pulse vector and the selected dispersion pattern;
the dispersion pattern selector comprising;
a first selector that pre-selects dispersion patterns of the plurality of fixed dispersion patterns; and
a second selector that determines the selected dispersion pattern, of the pre-selected dispersion patterns, to be convoluted with the pulse vector.

('295 patent, 28:16-34) The "dispersed pulse vector generator" comprises (among other things) "a pulse vector generator" and "a dispersed pulse vector generator;" therefore, the "pulse vector generator" term is central to the construction of claim 1. Plaintiff argued that no construction is necessary for "pulse vector generator, " because "the prefix 'pulse vector' imparts [sufficiently definite] structure to the term 'generator'" and that § 112, ¶ 6 does not apply. (D.I. 109 at 5) Plaintiff contended that "the specification describes a pulse vector generator's structure by 'describing the claim limitation's operation, such as its input, output, or connections.'" (Id., citing Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1299 (Fed. Cir. 2014)) Defendants' expert, Nikil Jayant, PhD ("Dr. Jayant"), opined that § 112, ¶ 6 applies, because the specification "does not disclose any type of structure, neither physical component nor a software algorithm, for generating a pulse vector." (D.I. 131, ¶ 52)

         3. The specification discloses that the "pulse vector generator" generates pulse vectors. (See, e.g., '295 patent, 6:26-30; 6:46-49; 7:6-9; figure 3, box 101; figure 4, box 216; figure 5, box 312; figure 6, box 416; and figure 7, box 516) Tables 1 and 2 identify the "pulse position candidates" for various channels. For example, table 1 shows channel 1 as having pulse position candidates in the form of an eight-tuple; however, the pulse position candidates for channels 2 and 3 are shown as a matrix having two rows and eight columns. ('295 patent, 6:51-62) The court notes that, aside from general boxes in "functional block diagram[s], " the specification does not identify any physical structure associated with the "pulse vector generator, " nor does the specification discuss software, processors, or computers of any kind.[5] Plaintiff contended that Apple v. Motorola applies, but Dr. Min did not express an opinion whether the '295 patent discloses a computer implemented invention or whether a "pulse vector generator" would be implemented in software in the first place. The Federal Circuit has explained that:

"Structure" to a person of ordinary skill in the art of computer-implemented inventions may differ from more traditional, mechanical structure. . . . the "structure" of computer software is understood through, for example, an outline of an algorithm, a flowchart, or a specific set of instructions or rules. . . . Structure may also be provided by describing the claim limitation's operation, such as its input, output, or connections. The limitation's operation is more than just its function; it is how the function is achieved in the context of the invention.

Apple, 757 F.3d at 1298-99.[6] Plaintiff argued the latter, relying on Dr. Min's opinion that the structure of the "pulse vector generator" is found in its "input, output, or connections." (D.I. 111 at ¶ 53) In response, Dr. Jayant pointed out that:

For example, tables 1 and 2 show that the positions of pulses within the pulse vectors may be reflective of an algebraic codebook table. ('295 Patent, 6:50-63, 27:38-47) However, the specification does not disclose how those pulse vectors are generated, nor does it disclose what, other than the amorphous "pulse vector generator, " generates those pulse vectors. For example, the specification does not disclose whether a pulse vector generator outputs stored pulse vectors in response to various inputs, or whether a pulse vector generator synthesizes and outputs pulse vectors in real-time.

(D.I. 131 at ¶ 53 (emphasis in original)) The specification explains "operation of the . . . excitation vector generator, " but the explanation of the operation of the "pulse vector generator" is conclusory: "the pulse vector generator 101 algebraically generates the signed pulse vectors corresponding to the number of channels (three in this embodiment) in accordance with the rule described in table 1." ('295 patent, 7:6-9; see also id., 6:46-49; 9:3-8)

         4. Table 1, as discussed above, shows where the pulses may be placed in a given vector or matrix, but the specification does not explain the "algebraic" process by which the pulse vector is generated.[7] Column 7 of the specification discusses various relationships involved in generating the excitation vector in the first embodiment, including a vector di, which is the "signed pulse vector for channel i." (Id., 7:32) In the first embodiment, the vector di may be a potential output from the pulse vector generator as identified by a mathematical relationship: di = ± δ(n - pi), n = O - L - 1" where an input, "pi [, is the] signed pulse vector candidate for channel i." (Id. at 7:32-34) The specification does not explain whether this is an algebraic relationship employed by the pulse vector generator. (Id. at 7:10-57) Plaintiff's expert, Dr. Min, explained that ±δ "is the pulse polarity" and that "pi is the pulse position candidate for channel i ... as shown in table 1."[8] (D.I. 138 at ¶ 8) Drawing upon the second embodiment, which discloses "a CELP speech coder, "[9] Dr. Min opined that the "combination index for pulse vectors"[10] is the input for the pulse vector generator. (D.I. 138 at ¶ 5 (citing '295 patent, 10:1-5; 8:58-59)) The second embodiment builds on the first, "this embodiment applies the excitation vector generator explained in the first embodiment to the random codebook of the CELP speech encoder of [figure] 1." ('295 patent, 8:40-43) However, nothing in the specification suggests that the applicant intended the second embodiment to be read into the first to explain the operation of the example in the first embodiment so as to impart structure to the "pulse vector generator" in the first embodiment. The parties agreed that the specification discloses a pulse vector, but the inputs, outputs, and connections associated with the pulse vector generator are described at a high level without sufficient detail to explain how the pulse vector generator "interacts with other components ... in a way that might inform the structural character of the limitation-in-question or otherwise impart structure" to the pulse vector generator.[11] Williamson, 792 F.3d at 1351. For these reasons, the court concludes that defendants have rebutted the presumption against means-plus-function claiming. Therefore, "pulse vector generator" is governed by § 112, ¶ 6.

         5. When § 112, ¶ 6 applies, a "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. "A patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120, 2124 (2014). Construing a claim under § 112, ¶ 6 "is a two-step process. The court must first identify the claimed function. Then, the court must determine what structure, if any, disclosed in the specification corresponds to the claimed function." Williamson, 792 F.3d at 1351. Means-plus-function claim language is indefinite "if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim." Id. at 1352 (citation omitted).

         6. The parties agree that the pulse vector generator performs the function of "generating] a pulse vector having a signed unit pulse." ('295 patent, 28:18-19; D.I. 130 at 7; see also D.I. 109 at 6) Dr. Min explained that "a person skilled in the art would associate the[] pulse generation rules [as in tables 1 and 2 and elsewhere in the specification] as the structures corresponding to the recited function." (D.I. 111, ¶ 56) Dr. Jayant opined that "the specification does not disclose corresponding structure for performing . . . [the] function, " and that tables 1 and 2 merely "show that the positions of pulses within the pulse vectors may be reflective of an algebraic codebook table" without disclosing how to generate pulse vectors. (D.I. 131, ¶¶ 52-53) In the first embodiment, "the pulse vector generator 101 algebraically generates [three] pulse vectors in accordance with the rule described in table 1." ('295 patent, 6:46-48; see also id., 7:6-9) The specification refers to table 1 as "a pulse generation rule." (Id., 8:22-28; 9:3-8; 9:25; 9:39) The seventh embodiment discloses another set of candidate positions for the pulses: "[t]he five signed unit pulses constituting the random vector have pulses each selected from the candidate positions defined for each of zero to fourth groups shown in table 2." ('295 patent, 27:28-30) Taken together, tables 1 and 2 are rules for where, in vector space, individual pulses may be located; however, neither table 1 nor table 2 describes an algorithm[12] governing the operation of the pulse vector generator.

         7. Plaintiff argued that "the prefix 'pulse vector' imparts structure to the term 'generator.'" (D.I. 109 at 5) Defendants responded that "[t]he prefix 'pulse vector' does nothing more than restate the specified function of the 'generator.'" (D.I. 143 at 1) "Pulse vector" cannot impart corresponding structure to "generator, " because "purely functional language, which simply restates the function associated with the means-plus-function limitation, is insufficient to provide the required corresponding structure." Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1317 (Fed. Cir. 2012) (citations omitted). Plaintiff responded that "the term is not indefinite because the specification discloses 'a specific set of instructions or rules' for generating pulse vectors."[13] (D.I. 137 at 3, quoting Apple, 757 F.3d at 1298) Plaintiff contended that "the specification 'disclose[s] adequate defining structure to render the bounds of the claim understandable to one of ordinary skill in the art.'" (D.I. 137 at 4, quoting AllVoice Computing PLC v. Nuance Commc'ns, Inc., 504 F.3d 1236, 1245 (Fed. Cir. 2007)) AllVoice Computing is inapposite, because the specification in AllVoice included an algorithm described in a flow chart in figure 8A, and the patentee's expert "set forth several straightforward ways that the algorithm represented in figure 8A could be implemented by one skilled in the art using well-known features of the Windows operating system."[14] AllVoice Computing, 504 F.3d at 1345. Plaintiff argued that "a person of ordinary skill in the art[15] would have been familiar with algebraic codebook tables, such as the ones in tables 1 and 2, and understood how a pulse vector generator inserts a non-zero number representing a pulse into at least one of the pulse position candidates shown in the tables." (D.I. 137 at 3 (citing D.I. 138, ¶¶ 6-9)) Defendants argued that plaintiff cannot "rely on the knowledge of one of skill in the art to compensate for the lack of disclosure in the '295 patent itself." (D.I. 143 at 3 & n.2, citing Function Media, LLC v. Google, Inc., 708 F.3d 1310, 1319 (Fed. Cir. 2013); Aristocrat Techs. Australia Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1336-37 (Fed. Cir. 2008)) The Court in Aristocrat distinguished AllVoice Computing and explained that "[t]he question [] is not whether the algorithm that was disclosed was described with sufficient specificity, but whether an algorithm was disclosed at all." Aristocrat, 521 F.3d at 1337. The Aristocrat court explained that

the proper inquiry for purposes of § 112, ¶ 6 analysis is to look at the disclosure of the patent and determine if one of skill in the art would have understood that disclosure to encompass software to perform the function and been able to implement such a program, not simply whether one of skill in the art would have been able to write such a software program.

Id. (citations and quotations omitted). Dr. Min did not explain that the '295 patent discloses software, nor did he express the opinion that a person having ordinary skill in the art would recognize tables 1 and 2 as disclosing computer-implemented algorithms. Instead, Dr. Min opined that "the term 'pulse vector generator' connotes an algorithm, " and that "a person of ordinary skill would understand [mathematically] how a pulse vector generator generates pulse vectors."[16] (D.I. 111, ¶ 54; D.I. 138, ¶ 5) In light of Aristocrat, the distinction here is between understanding the mathematical operation involved in calculating a pulse vector and understanding the patent specification as describing software to perform the function (and being able to program a computer to perform the function) associated with the pulse vector generator. Based upon the extrinsic record at hand, Dr. Min has established the former and not the latter.[17] Under § 112, ¶ 6, the term "pulse vector generator" lacks sufficient disclosure of structure and, therefore, is indefinite under § 112, ¶ 2, because it "fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention." Nautilus, 134 S.Ct. at 2124.

         8. "Dispersion pattern storage:"[18] "Memory for storing dispersion patterns." Section 112, ¶ 6 does not apply.[19] Not indefinite. The specification discloses that "[a] memory stores at least one type of dispersion pattern for each of the channels."[20] ('295 patent, abstract; figure 3, items 102, M1, M2, and M3)

         9. "Dispersion pattern selector:"[21] "Switch for selecting a dispersion pattern." Section 112, ¶ 6 does not apply.[22] Not indefinite. The specification recites sufficiently definite structure. For example, figure 3 discloses "a dispersion pattern storing and selecting section 102 having dispersion pattern storing sections and switches." ('295 patent, 6:20-22; see also figure 3, items 102, SW1, SW2, and SW3; 6:31-37; 6:66-7:5; 8:66-9:3; 11:31-41; 11:50-57; and 12:44-13:2) Extrinsic evidence: Dr. Min explained that figure 3 "graphically represents a switch that selects a dispersion pattern from multiple dispersion patterns" and that a person of ordinary skill in the art would recognize that the selector is a switch. (D.I. 111, ¶ 64-66)

         10. "A first selector:"[23] Section 112, ¶ 6 does not apply.[24] Not indefinite. Claim 1 recites "a first selector that pre-selects dispersion patterns of the plurality of fixed dispersion patterns." ('295 patent, 28:30-31) Figure 3 discloses "a dispersion pattern storing and selecting section 102 having dispersion pattern storing sections and switches." ('295 patent, 6:20-22; see also figure 3, items 102, SW1, SW2, and SW3) The "switches SW1 to SW2 [are] for selecting one kind of dispersion pattern from M kinds of dispersion patterns stored in the respective storing sections M1 to M3." ('295 patent, 6:34-37) Moreover, "in the CELP speech coder using the excitation vector generator of the first embodiment in the random codebook, a pre-selection for dispersion patterns stored in the dispersion pattern storing and selecting section is carried out. . . before searching the index of random codebook." ('295 patent, 11:52-57 (emphasis added)) While the specification does not identify which specific switch is the first selector, the specification discloses an algorithm for the operation of the first selector:

[W]hen the adaptive codebook gain is larger than the threshold value as a result of the comparison, the control signal provides an instruction to select the dispersion pattern obtained by the pre-training to reduce the quantization distortion in vector quantization processing for random excitations. Also, when the adaptive code gain is not larger than the threshold value as a result of the comparison, the control signal provides an instruction to carry out the pre-selection for the dispersion pattern different from the dispersion pattern obtained from the result of the pretraining.

('295 patent, 12:49-59) For these reasons, § 112, ¶ 6 does not apply. See Williamson, 792F.3dat1349.

         11. "A second selector:"[25] Section 112, ¶ 6 applies. Indefinite. Claim 1 recites "a second selector that determines the selected dispersion pattern, of the preselected dispersion patterns, to be convoluted with the pulse vector." ('295 patent, 28:32-34) The specification explains that "[t]he pulse vector dispersion section 103 performs convolution of the pulse vectors output from the pulse vector generator and the dispersion patterns output from the dispersion pattern storing and selecting section 102 in every channel so as to generate N dispersed vectors." ('295 patent, 6:38-43) The specification does not mention "a second selector, " and the specification contains no algorithms describing the operation of "a second selector."[26] Therefore, § 112, ¶ 6 applies. See Williamson, 792 F.3d at 1349.

         12. Construing a claim under § 112, ¶ 6 "is a two-step process. The court must first identify the claimed function. Then, the court must determine what structure, if any, disclosed in the specification corresponds to the claimed function." Williamson, 792 F.3d at 1351. Means-plus-function claim language is indefinite "if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim." Id. at 1352 (citation omitted). The function of "a second selector, " under § 112, ¶ 6, is "determining] the selected dispersion ...


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