United States District Court, D. Delaware
Michael J. Farnan, FARNAN LLP, Wilmington, DE; Peter J.
McAndrews (argued), Rajendra A. Chiplunkar (argued), and
Thomas J. Wimbiscus (argued), MCANDREWS, HELD & MALLOY,
Chicago, IL. Attorneys for Plaintiff
Kenneth L. Dorsney, MORRIS JAMES LLP, Wilmington, DE; Ross
Barton (argued), Brianna Ford Kadjo (argued), and H. James
Abe, ALSTON & BIRD LLP, Charlotte, NC; Benn C. Wilson,
BRADLEY ARANT BOULT CUMMINGS LLP, Birmingham, AL. Attorney
for Defendants Adtran, Inc. and Zyxel Communications, Inc.
ANDREWS, U.S. DISTRICT JUDGE
before the Court is the issue of claim construction of
multiple terms in U.S. Patent Nos. 6, 445, 730 ("the
"730 patent"); 7, 978, 753 ("the '753
patent"); 8, 437, 382 ("the '382 patent");
and 8, 611, 404 ("the '404 patent"). The Court
has considered the Parties' Joint Claim Construction
Brief (Civ. Act. No. 13-02013-RGA, D.I. 441; Civ. Act. No.
14-00954-RGA, D.I. 297; Civ. Act. No. 15-00121-RGA, D.I.
297). The Court heard oral argument on January
19, 2018. (D.I. 513).
patents-in-suit represent "Family 7" of the patents
that Plaintiff has asserted against Defendants, and they
share a common specification. (D.I. 441, p. 1 n.l). The
Family 7 patents relate to multicarrier transmission systems
with low power mode or sleep mode and rapid-on capabilities.
is a bedrock principle of patent law that the claims of a
patent define the invention to which the patentee is entitled
the right to exclude." Phillips v. AWH Corp.,
415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc) (citation
omitted). '"[T]here is no magic formula or catechism
for conducting claim construction.' Instead, the court is
free to attach the appropriate weight to appropriate sources
'in light of the statutes and policies that inform patent
law."' SoftView LLC v. Apple Inc., 2013 WL
4758195, at *1 (D. Del. Sept. 4, 2013) (quoting
Phillips, 415 F.3d at 1324) (alteration in
original). When construing patent claims, a court considers
the literal language of the claim, the patent specification,
and the prosecution history. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 979-80 (Fed. Cir. 1995)
(en banc), affd, 517 U.S. 370 (1996). Of these
sources, "the 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." Phillips, 415 F.3d at 1315.
words of a claim are generally given their ordinary and
customary meaning. . . . [This is] the meaning that the term
would have to a person of ordinary skill in the art in
question at the time of the invention, i.e., as of the
effective filing date of the patent application."
Id. at 1312-13. "[T]he ordinary meaning of a
claim term is its meaning to [an] ordinary artisan after
reading the entire patent." Id. at 1321.
"In some cases, the ordinary meaning of claim language
as understood by a person of skill in the art may be readily
apparent even to lay judges, and claim construction in such
cases involves little more than the application of the widely
accepted meaning of commonly understood words."
Id. at 1314.
court relies solely upon the intrinsic evidence-the patent
claims, the specification, and the prosecution history-the
court's construction is a determination of law. See
Teva Phann. USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831,
841 (2015). The court may also make factual findings based
upon consideration of extrinsic evidence, which
"consists of all evidence external to the patent and
prosecution history, including expert and inventor testimony,
dictionaries, and learned treatises." Phillips,
415 F.3d at 1317-19. Extrinsic evidence may assist the court
in understanding the underlying technology, the meaning of
terms to one skilled in the art, and how the invention works.
Id. Extrinsic evidence, however, is less reliable
and less useful in claim construction than the patent and its
prosecution history. Id.
claim construction is persuasive, not because it follows a
certain rule, but because it defines terms in the context of
the whole patent." Renishaw PLC v. Marposs
Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir.
1998). It follows that "a claim interpretation that
would exclude the inventor's device is rarely the correct
interpretation." Osram GMBH v. Int'l Trade Comm
'n, 505 F.3d 1351, 1358 (Fed. Cir. 2007) (citation
CONSTRUCTION OF DISPUTED TERMS
asserted patents claim both an apparatus and a method for the
reliable exchange of diagnostic and test information over a
multicarrier communications system.
asserts claims 1, 4, 6, and 10 of the '404 patent. They
read as follows:
apparatus comprising a transceiver operable to:
transmit, in a full power mode, a plurality of superframes,
wherein the superframe comprises a plurality of data frames
followed by a synchronization frame;
transmit, in the full power mode, a synchronization
receive a message to enter into a low power mode;
enter into the low power mode by reducing a power
consumption of at least one portion of a transmitter;
store, in the low power mode, at least one parameter
associated with the full power mode operation wherein
the at least one parameter comprises at least one of a fine
gain parameter and a bit allocation parameter;
transmit, in the low power mode, a. synchronization
exit from the low power and restore the full power mode
by using the at least one parameter and without needing to
reinitialize the transceiver.
4. The apparatus of claim 1, wherein the apparatus is a CO
device that is capable of transmitting internet and video
6. An apparatus comprising a transceiver operable to:
receive, in a full power mode, a plurality of superframes,
wherein the superframe comprises a plurality of data frames
followed by a synchronization frame; receive, in the full
power mode, a synchronization signal; transmit a
message to enter into a low power mode; store, in a
low power mode, at least one parameter associated with
the full power mode operation wherein the at least one
parameter comprises at least one of a fine gain parameter and
a bit allocation parameter; receive, in the low power
mode, a. synchronization signal; and exit from the low
power and restore the full power mode by using the at
least one parameter and without needing to reinitialize the
10. The apparatus of claim 6, wherein the apparatus is a
customer premises equipment that is capable of transmitting
internet and video data.
('404 patent, claims 1, 4, 6, 10) (disputed terms
italicized). The '404 patent is asserted against
Defendant Adtran only. (D.I. 441, p. 1 n.2).
asserts claims 18 and 22 of the '730 patent. They read as
18. A multicarrier transceiver having a sleep mode
capability, comprising: memory that stores at least one
parameter representative of an operating mode of said
multicarrier transceiver; a controller that places at least
one component of said multicarrier transceiver in a sleep
mode responsive to a sleep mode signal and restores said
at least one component of said multicarrier transceiver to
the operating mode in response to an awaken signal, the
restoration to the operating mode occurring without needing
to reinitialize said multicarrier transc[ei]ver by
recovering said at least one stored parameter from the
memory; and a synchronizer module that uses a
synchronization signal to maintain synchronization between
said multicarrier transceiver and a second multicarrier
transceiver while said at least one component of said
multicarrier transceiver is in the sleep mode.
22. The multicarrier transceiver of claim 18 wherein said at
least one parameter comprises at least one of a
frequency-domain equalizer coefficient, a time-domain
equalizer coefficient, an echo canceller tap, a data rate, a
coding parameter, an interleaving parameter, a fine gain
parameter, a subchannel gain parameter, and a bit allocation
('730 patent, claims 18, 22) (disputed terms italicized).
asserts claims 1 and 2 of the '753 patent. They read as
1. A multicarrier transceiver having a sleep mode
capability, comprising A. means responsive to a sleep
mode command for:
(1) storing selected state parameters characteristic of
the communications channel over which the transceiver is
(2) reducing power to selected portions of transceiver
circuitry; and B. means responsive to a wake-up
(1) restoring power to said transceiver;
(2) restoring the state of said transceiver from said
sleep mode by means of said stored parameters; and C.
means for maintaining a common, synchronized data frame
count between said transceiver and a remote transceiver with
which it communicates, to thereby facilitate restoration of
communication without reinitialization of said
transceiver, wherein the state parameters include one or
more parameters selected from the group comprising
frequency-domain equalizer coefficients, time domain
equalizer coefficients, echo canceller coefficients, bit
allocations, coding parameters, fine gains, and subchannel
2. A multicarrier transceiver according to claim 1 in which
the means for maintaining said frame count comprises a signal
defining a timing reference during at least the time when
said first transceiver is in sleep mode.
('753 patent, claims 1, 2) (disputed terms italicized).
asserts claim 14 of the '382 patent, which reads as
14. A multicarrier transceiver having a sleep mode
capability comprising: a transmitter or receiver portion
placing at least one component of a first multicarrier
transceiver in a sleep mode;
storing at least one parameter representative of a full power
mode of the at least one component of the first multicarrier
maintaining synchronization between the first multicarrier
transceiver and a second multicarrier transceiver using a
synchronization signal while the at least one
component of the first multicarrier transceiver is in the
sleep mode; using the at least one stored parameter,
for transmission or reception, in response to a signal to
awaken from the sleep mode; and
restoring the at least one component of the first
multicarrier transceiver from the sleep mode to the
full power mode, without needing to reinitialize the first
multicarrier transceiver, by using the at least one
recovered parameter, wherein the transceiver is used
for communications over an internet.
('382 patent, claim 14) (disputed terms italicized).
Plaintiff's proposed construction: "a state
of operation in which power is consumed, but the amount of
power consumed is less than when operating in a state with
full data transmission capabilities"
Defendant Adtran 's proposed construction:
"a mode in which the circuitry is not transmitting or
receiving content and the circuitry consumes power, but the
amount of power consumed is less than the full power
Court's construction: '"a mode in which
the circuitry consumes power, but the amount of power
consumed is less than the full power mode"
term appears in each of the asserted claims of the '404
patent. Although the parties agree that less power is
consumed in the low power mode than in full power mode, they
disagree regarding how to characterize this reduction in
power. (D.I. 441, p. 15). They also disagree regarding
whether the "low power mode" requires that no
content is transmitted or received. (Id.).
respect to how to characterize the reduction in power
associated with the "low power mode," Plaintiff
asserts that its construction is proper because it makes
clear that in the "low power mode, less power is
consumed than in a full power mode but power is still being
consumed." (Id. p. 16). As support, Plaintiff
cites claims 1 and 6, which recite transmitting and
receiving, respectively, "in the low power mode, a
synchronization signal." (Id.). Plaintiff also
cites portions of the specification discussing maintaining
synchrony in "sleep mode" that recite maintaining
power to certain portions of the transceiver circuitry.
(Id. (citing '404 patent at 7:21-25, 7:42-44)).
It is proper to characterize the power consumed in low power
mode as being "less than when operating in a state with
full data transmission capabilities," Plaintiff argues,
because the specification explains (1) "that
transceivers in the 'on* state 'consume a significant
amount of power, even when they are not actively transmitting
or receiving data."'* and (2) that the
""on* state (or full power mode) is a state where
the transceiver has 'full data transmission
capabilities.'*" (Id. p. 15 (citing
'404 patent at 2:59-60, 8:21-23)).
counters that its construction should be adopted because its
construction "'is drawn directly from the
claims' comparison of a 'low power mode' and
'full power mode.'" (Id. p. 20).
Plaintiff contends that Defendant's proposed construction
is "unhelpful" because it compares "low power
mode" to "full power mode" without clarifying
what "full power mode" means. (Id. p. 25).
Plaintiff also takes issue with Defendant's proposed
construction because "it could be interpreted to read on
a state in which a transceiver receives no power.
(Id. pp. 16-17). Defendant disclaims any reading of
its proposed construction that covers such a state, and
offers an alternate construction that clarifies that
"the circuitry consumes power, but the amount of power
consumed is less than the full power mode."
(Id. p. 32 (emphasis omitted)).
point I agree with Defendant. Defendant's alternate
construction addresses Plaintiffs primary opposition to
Defendant's characterization of the reduction in power by
clarifying that power is consumed in the "low power
equates the "on" state with the "full power
mode" recited in the claims, and has not offered a
compelling reason to define "low power mode" in
terms of data transmission capabilities. (See Id. p.
15). Though the specification describes a transceiver in
"sleep mode" as "consum[ing] reduced power
when it is not needed for transmission or reception,"
the claims themselves do not recite any data transmission
limitation for "low power mode." ('404 patent,
6:1-6, 10:2-12:21). Instead, as Defendant points out the
claims compare "low power mode" to "full power
mode.'* (D.I. 441. p. 20; see, e.g.. '404
patent at 10:2-18).
not find compelling Plaintiffs criticism that comparing
"'low power mode" to "full power
mode" in defining "low power mode" has no
meaning. To the contrary, I think that the meaning of
"full power mode'" is readily understandable
and requires no construction, and that the claims'
definition of "low power mode" with reference to
"full power mode" provides ample guidance that a
transceiver in "low power mode" consumes some
power, but consumes less power than a transceiver in full
power mode. ('404 patent at 10:6-9 (reciting
"enter[ing] into the low power mode by reducing a power
consumption of at least one portion of the transmitter"
following "transmission], in the full power mode, [of] a
synchronization signal")). Rather than clarifying
meaning, Plaintiffs proposed construction seeks to replace
"full power mode" with, "a state of full data
transmission capabilities." In context, I do not think
that "a state with full data transmission
capabilities" imparts any more meaning than "full
power mode." I find that Plaintiffs proposed
construction amounts to a substitution of the words the
patentee chose without adequate justification. See
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 the subject matter which the
patentee regards as his invention."' (citation
omitted) (brackets in original)).
parties also dispute whether "low power mode"
should be limited to a mode in which no content is
transmitted or received. Plaintiff urges that importing any
limitation defining "low power mode" with respect
to the transfer of content is improper because doing so would
import a limitation to the claims from an embodiment. (D.I.
441, pp. 17, 28) According to Plaintiff, the specification
discloses embodiments that contemplate the transmission of
content during "low power mode." (Id.
(citing '404 patent at 8:47-55 (disclosing
'"partial" sleep mode, in which only part of
each transceiver is powered down," for example
'"where data transfer is one-way"), 5:54
(disclosing that the [fast Fourier transform] is dormant
during ''sleep mode"), 7:21 (disclosing
"reduce[d] power to parts of the analog circuitry"
during '"sleep mode")). Plaintiff further
asserts that Defendant's proposed use of the word
"content" introduces ambiguity to the term, since
the specification does not use the word "content."
(Id. p. 18). Additionally, Plaintiff points to U.S.
Patent No. 9, 094, 268 ("the "268 patent"), a
member of the same patent family as the '404 patent with
the same inventorship. (D.I. 441, pp. 29-30). According to
Plaintiff, the '268 patent provides evidence that when
the patentee intended to claim "low power mode" in
terms of content transmission, the patentee explicitly did
so. (Id.; D.I. 513 at 25:6-26:6). In relevant part,
the '268 patent claims "entering the low power mode,
wherein a transmitter portion of the transceiver does not
transmit data during the low power mode." ('268
patent at 10:9-11). Therefore, Plaintiff argues, no content
or data limitation should be imported into this term in the
'404 patent, because the patentee did not expressly
include it in the claims, and the '404 patent does not
contain disclosures that preclude data transmission in a low
power mode. (D.I. 513 at 26:3-6, 40:2-9).
to Defendant, descriptions of "the present
invention" in the Abstract, Figure 2, the specification,
and provisional application No. 60/072, 447 (to which the
Family 7 patents claim priority) support a construction that
precludes content transmission or reception during "low
power mode." (D.I. 441, pp. 21-22). For example, the
Abstract discloses, "A multicarrier transceiver is
provided with a sleep mode in which it idles with reduced
power consumption when it is not needed to transmit or
receive data." ('404 patent, Abstract). Defendant
also points to the specification's disclosure of a
"partial sleep mode," in which content can be
communicated in a "one-way' mode.'' as
consistent with the limitation that no content is transmitted
during '"sleep mode." (Id. p. 23).
According to Defendant, the specification's disclosure
that content may be transmitted during '"partial
sleep mode" provides evidence of a common understanding
that no content is transmitted during "sleep mode.'*
(Id. pp. 23-24). Therefore, Defendant contends,
"Plaintiff cannot now construe the claims as if
'partial' had been included." (Id. p.
point I agree with Plaintiff. The claims of the related
'268 patent demonstrate that the patentee knew how to
draft claims that define "low power mode" in terms
of data transmission, and the claims of the '404 patent
contain no such limitation. Though Defendant points to
examples in the specification that are consistent with its
proposed content limitation, Defendant has not provided
convincing evidence that the examples it cites preclude any
content transmission during "low power mode."
Indeed, the parties each identify some of the same
embodiments (such as the specification's discussion of
"partial sleep mode") to support their positions.
(Id. pp. 17, 23-24). Accordingly, I decline to
import a limitation into this term that would preclude the
transmission of content.
I will construe "low power mode" to mean "a
mode in which the circuitry consumes power, but the amount of
power consumed is ...