UNITED STATES INTERNATIONAL TRADE COMMISSION
`WASHINGTON, D.C.
`
`In the Matter of
`
`CERTAIN CONSUMER ELECTRONICS
`AND DISPLAY DEVICES WITH
`GRAPHICS PROCESSING AND GRAPHICS
`PROCESSING UNITS THEREIN
`
`Investigation No. 337-TA-943
`
`ORDER NO. 12: CONSTRUING TERMS OF THE ASSERTED PATENTS
`
`(July 24, 2015)
`
`The claim terms construed in this Order are done so for the purposes of this Investigation.
`
`Hereafter, discovery and briefing in this Investigation shall be governed by the construction of the
`
`claim terms in this Order. Those terms not in dispute need not be construed. See Vanderlande
`
`Indus. NederlandBVv. Int'l Trade Comm'n, 366 F.3d 1311, 1323 (Fed. Cir. 2004) (noting that the
`
`administrative law judge need only construe disputed claim terms)
`
`SONY Exhibit 1004 - 0001
`
`

`

`Table of Abbreviations
`
`CMIB
`CMRB
`CBPS
`RMIB
`RMRB
`RBPS
`SMIB
`SMRB
`SBPS
`Tr.
`
`Complainant's Initial Markman Brief
`Complainant's Reply Markman Brief
`Complainant's Bullet-Point Summary
`Respondents' Initial Markman Brief
`Respondents' Reply Markman Brief
`Respondents' Bullet-Point Summary
`Staff's Initial Markman Brief
`Staff's Reply Markman Brief
`Staff's Bullet-Point Summary
`Transcript of the Markman Hearing
`
`SONY Exhibit 1004 - 0002
`
`

`

`Table of Contents
`INTRODUCTION .............................................................................................................. 1
`RELEVANT LAW ............. : ............................................................................................... 2
`U.S. PATENT NO. 7,865,258 & U.S. PATENT NO. 8,131,391 ....................................... 5
`A.
`Overview ............................................. ,.; ................................................................. 5
`Level of Ordinary Skill in the Art ............ : .............................................................. 7
`B.
`C.
`Undisputed Term- CDMA .................................................................................... 9
`D.
`Disputed Term- "original audio signalrepresentation in packet format" ............. 9
`E.
`Disputed Term -"reduced intersymbol interference coding" ............................ ; .. 13
`F.
`Disputed term - "virtually free from interference" ............................................... 19
`G.
`Disputed term- "configured for independent CDMA communication operation"29
`H.
`Disputed term- "unique user code" ...................................................................... 34
`I.
`Disputed term- "direct conversion module" .......................................... ' .............. 39
`CONCLUSION ................................................................................................................. 43
`
`I.
`II.
`III.
`
`IV.
`
`11
`
`SONY Exhibit 1004 - 0003
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`

`

`I.
`
`INTRODUCTION
`
`The Commission instituted this investigation on January 13, 2015, based on a complaint
`
`filed on behalf of One-E-Way, Inc. ("One-E-Way" or "Complainant"). 80 Fed Reg. 1663
`
`(January 13, 2015). The complaint alleges violations of Section 337 in the importation into the
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`United States, sale for importation, and sale within the United States after importation of certain
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`wireless headsets by reason of infringement of, inter alia, claims 4, 8, and 10 of U.S. Patent No.
`
`7,865,258 ("the '258 Patent") and claims 1-6 and 10 of U.S. Patent No. 8,131,391 ("the '391
`
`Patent") 1 by, inter alia: (i) Sony Corporation~ Sony Corporation of America, and Sony Electronics
`
`Inc. (collectively "Sony"); (ii) BlueAnt Wireless Ltd. and BlueAnt Wireless, Inc. (collectively
`
`"BlueAnt"); (iii) Creative Technology Ltd. and Creative Labs, Inc. (collectively "Creative"); (iv)
`
`Jawbone,
`
`Inc.
`
`("Jawbone''); and
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`(v) GN Netcom A/S
`
`("GN Netcom")
`
`(collectively
`
`"Respondents").2 Jd
`
`Originally, Complainant also asserted infringement of claims 3 and 11 o(the '258 Patent, but
`subsequently filed a motion to terminate the investigation with respect to those claims. On May 4,
`2015, I issued Order No.9 terminating this investigation with regard to claims 3 and 11 of the
`'258 Patent. (Order No.9 (May 4, 2015); Notice of Commission Determination Not to Review an
`Initial Determination Granting an Unopposed Motion to Partially Terminate the Investigation with
`Respect to Claims 3 and 11 ofU.S. Patent No. 7,865,258 (May 26, 2015).)
`On July 20,2015, Complainant filed an unopposed motion to partially terminate the
`investigation as to claims 4 and 10 of the '258 Patent and claim 2 of the '391 Patent.
`2 Complainant also named as respondents in the complaint Beats Electronics LLC and Beats
`Electronics International Ltd. (collectively "Beats"), but subsequently filed a motion to terminate
`the investigation with respect to Beats. See Motion Docket No. 943-004. Beats is no longer a
`party to this investigation. (See Notice of Commission Determination Not to Review an Initial
`Determination Granting a Motion to Terminate the Investigation as to Respondents Beats(cid:173)
`Electronics LLC and Beats Electronics International Ltd. Based on Withdrawal of Allegations
`(April29, 2015).)
`.
`Additionally, the Complainant named as respondents Sennheiser Electronic GmbH & Co. KG
`and Sennheiser Electronic Corporation (collectively "Sennheiser"). On April30, 2015,
`Complainant and Respondents Sennheiser filed a joint motion to terminate Sennheiser by
`settlement. Sennheiser is no longer a party to this investigation. (See Notice of Commission
`Determination Not to Review an Initial Determination Granting a Motiori toTerminate the
`Investigation as to Respondents Sennheiser Electronic GmbH & Co. KG and Sennheiser
`Electronic Corporation Ba:sed on Settlement Agreement (June 11, 2015).)
`
`1
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`SONY Exhibit 1004 - 0004
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`

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`On February 9, 20~5, I issued the initial procedural schedule for this investigation setting
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`May 26-27, 2015, as the dates for the Markman hearing. (See Order No.5, Appendix A (February
`
`9, 2015).) In accordance with the Joint Proposed Procedural Schedule submitted by the parties
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`thereafter, the parties exchanged: (i) on March 13, 2015, their lists of proposed terms for
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`construction, as required by G.R. 8.1; and (ii) on March 27,2015 and April14, 2015~ their
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`preliminary constructions for those terms, as required by G.R. 8.2. After meeting and conferring
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`to narrow the issues, the parties filed their Joint Claim Construction Chart on April21, 2015. On
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`May 26-27,2015, in accordance with the procedural schedule, I held a technology tutorial and
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`~
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`Markman hearing. I informed the parties during the hearing that I would allow them to file a
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`bullet-point summary of their claims construction arguments after the conclusion of the Markman
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`hearing. On June 3, 2015, Complainant and Respondents filed a bullet-point summary of their
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`claims construction arguments. One June 5, 2015, the Staff filed a bullet-point summary of its
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`claims construction arguments.
`
`II.
`
`RELEVANT LAW
`
`"An infringement analysis entails two steps. The first step is determining the meaning and
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`scope of the patent claims asserted to be infringed. The second step is comparing the properly
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`construed claims to the device accused of infringing."" Markman v. Westview Instruments, Inc., 52
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`F.3d 967,976 (Fed. Cir. 1995) (en bane) (internal citations omitted), ajj'd, 517 U.S. 370 (1996).
`
`Claim construction is a "matter of law exclusively for the court." I d. at 970-71. "The construction
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`of claims is simply a way of elaborating the normally terse claim language in order to understand
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`and explain, but not to change, the scope ofthe claims." Embrex, Inc. Y. Serv. Eng'g Corp., 216
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`F.3d 1343, 1347 (Fed. Cir. 2000).
`
`Claim construction focuses on the intrinsic evidence, which consists of the claims
`
`themselves, the specification, and the prosecution history. See Phillips v. AWH Corp., 415 F.3d
`
`2
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`SONY Exhibit 1004 - 0005
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`

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`1303, 1314 (Fed. Cir. 2005) (en bane); see also Markman, 52 F.3d at 979. As the Federal Circuit
`
`in Phillips explained, courts must analyze each of these components to determine the "ordinary
`
`and customary meaning of a claim term" as understood by a person of ordinary skill in art at the
`
`time of the invention. 415 F .3d at 1313. "Such intrinsic evidence is the most significant source of
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`the legally operative meaning of disputed claim language." Bell At!. Network Servs., Inc. v. Covad
`
`Commc'ns Grp., Inc., 262 F.3d 1258, 1267 (Fed. Cir. 2001).
`
`"It 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, 415 F.3d at 1312 (quoting
`
`Innova!Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir.
`
`2004)). "Quite apart from the written description and the prosecution history, the claims
`
`themselves provide substaptial guidance as to the meaning of particular claims terms."
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`!d. at 1314; see also Interactive Gift Express, 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
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`'particularly point [] out and distinctly claim []the subject matter which the patentee regards as
`
`his invention."). The context in which a term is used in an asserted claim can be ""highly
`
`instructive." Phillips, 415 F.3d at 1314. Additionally, other claims in the same patent, asserted or
`
`unasserted, may also provide guidance as to the meaning of a claim term. !d.
`
`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." !d. at 1315 · (quoting
`
`Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)). "[T]he specification
`
`may reveal a special definition given to a claim term by the patentee that differs from the meaning
`
`·it would otherwise possess. In such cases, the inventor's lexicography governs." !d. at 1316. "In
`
`other cases, the specification may reveal an intentional disclaimer, or disavowal, of claim scope by
`
`3
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`SONY Exhibit 1004 - 0006
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`

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`the inventor." !d. As a general rule, however, the particular examples or embodiments discussed
`
`in the specification are not to be read into the claims as limitations. !d. at 1323. In the end, "[t]he
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`construction that stays true to the claim language and most naturally aligns with the patent's
`
`description of the invention will be ... the correct construction." !d. at 1316 (quoting Renishaw
`
`PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998)).
`
`In addition to the claims and the specification, the prosecution history should be examined,
`
`if in evidence. !d. at 1317; see also Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 913
`
`(Fed. Cir. 2004). The prosecution history can "often inform the meaning of the claim language by
`
`demonstrating how the inventor understood the invention and whether the inventor limited the
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`invention in the course of prosecution, making the claim scope narrower than it would otherwise
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`be." Phillips, 415 F.3d at 1317; see also Chimie v. PPG Indus. Inc., 402 F.3d 1371, 1384 (Fed.
`
`Cir. 2005) ("The purpose of consulting the prosecution history in const~ing a claim is to exclude
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`any interpretation that was disclaimed during prosecution.").
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`When the intrinsic evidence does not establish the meaning of a claim, then extrinsic
`
`evidence (i.e., all evidence external to the patent and the prosecution history, including
`
`dictionaries, inventor testimony, expert testimony, and learned treatises) may be considered.
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`Phillips, 415 F.3d at 1317. Extrinsic evidence is generally viewed as less reliable than the patent
`
`itself and its prosecution history in determining how to define claim terms. !d. at 1317. "The
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`court may receive extrinsic evidence to educate itself about the invention and the relevant
`
`technology, but the court may not use extrinsic evidence to arrive at a claim construction that is .
`
`clearly at odds with the construction mandated by the intrinsic evidence." Elkay Mfg. Co. v. Ebco
`
`Mfg. Co., 192 F.3d 973, 977 (Fed. Cir. 1999). ·
`
`4
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`SONY Exhibit 1004 - 0007
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`

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`If, after a review of the intrinsic and extrinsic evidence, a claim term remains ambiguous,
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`the claim should be construed so as to maintain its validity. Phillips, 415 F.3d at 1327. Claims,
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`however, cannot be judicially rewritten in order to fulfill the axiom of preserving their validity.
`
`See Rhine v. Casio, Inc., 183 F.3d 1342, 1345 (Fed. Cir. 1999). Thus, "ifthe only claim
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`construction that is consistent with the claim's language and the written description renders the
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`claim invalid, then the axiom does not apply and the claim is simply invalid." !d.
`
`III.
`
`U.S. PATENT NO. 7,865,258 & U.S. PATENT NO. 8,131,391
`
`A.
`
`Overview
`
`The Asserted Patents descend from a series of patent applications, as shown below:
`
`U.S. Application No. 10/027,391
`(Original Parent Application)
`Published As:
`U.S. Publication No. US 2003/0118196
`
`U.S. Application No. 10/648,012
`(Continuation-in-Part Application)
`Issued As:
`U.S. Patent No. 7,412,294
`
`U.S. Application No. 12/1""4,729
`(Continuation Application)
`Issued As:
`U.S. Patent No. 7,684,885
`
`5
`
`SONY Exhibit 1004 - 0008
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`

`

`(See CMIB, Ex. 1 ('258 Patent), cover page; Ex. 2 ('391 Patent), cover page.)
`
`As shown above, the Asserted Patents are based on a continuation application claiming the
`
`benefit ofU.S. Patent Application No. 12,144,729 ("the '729 Application"), which is itself a
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`continuation application (that issued as U.S. Patent No. 7,684,885 ("the '885 Patent")) claiming
`
`the benefit ofU.S. Patent Application No. 10/648,012 ("the '012 Application'), which is, in tum, a
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`continuation-in-part application (that issued as U.S. Patent No. 7,412,294 ("the '294 Patent"))
`
`claiming the benefit of the original parent application-- U.S. Patent Application No. 10/027,391
`
`("the '391 Application")- abandoned and published as U.S. Publication No. US 2003/0118196
`
`"the '196 Publication")). (CMIB, Ex. 1 ('258 Patent), cover page; Ex. 2 ('391 Patent), cover
`
`page.) Thus, the claims, specifications, and prosecution histories of all of the above related patent
`
`applications are pertinent to the issue of claim construction in this investigation. Omega
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`Engineering, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed. Cir. 2003).
`
`Both the '258 Patent (entitled "Wireless Digital Audio System") and the '391 Patent (titled
`
`"Wireless Digital Audio Music System~') name C. Earl Woolfork as the inventor and One-E-Way
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`as the assignee. (CMIB, Ex. 1 (':2.58 Patent), cover page; Ex. 2 ('391 Patent), cover page.) The
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`'258 Patent and the '391 Patent are generally directed to a digital audio transmitter operatively
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`coupled to an audio source and a digital audio receiver operatively coupled to a headphone set, the
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`audio transmitter and the audio receiver being configured for digital wireless communication.
`
`(CMIB, Ex. 1 ('258 Patent), Abstract; Ex. 2 ('391 Patent), Abstract.) Further, the digital wireless
`
`communication involves the coded transmission of the audio signal, which provides for private
`
`listening without interference from other users of wireless devices occupying the same space.
`
`6
`
`SONY Exhibit 1004 - 0009
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`

`

`(CMIB, Ex. 1 ('258 Patent), Figs. 1-3, "Summary ofthe Invention"; ·Ex. 2 ('391 Patent), Figs. 1-
`
`3, "Summary of the Invention.")
`
`B.
`
`Level of Ordinary Skill in the Art
`
`The Parties' Positions
`
`Complainant proposes that a person of ordinary skill in the art of the Asserted Patents
`
`would have "a Bachelor of Science degree and at least one year of experience working as an
`
`engineer in a telecommunications-related field," or could have "more work experience and less
`
`formal education, or more formal education and less work experience," such as, for example,
`
`"someone with a Bachelor of Science and one year of graduate-level formal education in a
`
`telecommunications-related field" or "someone with at least five years of experience working as
`
`an engineer in a telecommunications-related field." (CMIB at 13.)
`
`Respondents propose that a person of ordinary skill in the art of the Asserted Patents
`
`would have "a Bachelor of Science degree in electrical engineering or a related field, and around
`-
`two years of experience in the design or implementation of wireless communications systems, or
`
`the equivalent," or would have "six years of experience in the design or implementation of
`
`wireless communications systems, or the equivalent." (RMIB at 6.)
`
`The Staff contends the appropriate level of ordinary skill in the art is that proposed by
`
`Respondents. (SMIB at 8.) According to the Staff, even though Respondents arguably require a
`
`higher in level of skill (of work experience), Respondents' proposal appears to the Staff to be
`
`more precise than Complainant's proposal (reciting, inter alia, "telecommunications-related
`
`>field") and more consistent with the disclosures ofthe Asserted Patents (discussing, inter alia,
`
`"digital wireless communications"). (SMIB at 9, citing CMIB,Ex. 1 ('258 Patent), Abstract; Ex.
`
`2 ('391 Patent), Abstract.) While Complainant's proposal "certainly encompasses" "digital
`
`wireless communications," the problem is that by reciting "telecommunications-related field" in
`
`7
`
`SONY Exhibit 1004 - 0010
`
`

`

`their proposal, the Staff contends the Complainant is being overly broad because it is including
`
`technology fields beyond those disclosed in the Asserted Patents. (SMIB at 9.) Continuing, the
`
`Staff notes that Complainant cites, inter alia, Federal Standard 1037C ("Telecommunications:
`
`Glossary of Telecommunication Terms") as support for its proposed claim constructions. (SMIB
`
`at 9, citing CMIB at 5-6, Ex. 19 (Federal Standard 1037C).) As noted by the Staff, Federal
`
`Standard 1037C states, inter alia:
`
`This glossary provides standard definitions for the fields subsumed by
`the umbrella discipline of telecommunications. Fields defined herein
`include antenna· types and measurements, codes/coding schemes,
`computer and data communications (computer graphics vocabulary, file
`transfer techniques, hardware, software), fiber optics communications,
`facsimile types and techniques, frequency topics (frequency modulation,
`interference, spectrum sharing), Internet, ISDN, LANs management,
`architecture/topology), Nil, NS/EP, power issues, PCSIUPT/cellular
`mobile,
`radio
`communications,
`routing
`schemes,
`satellite
`communications,
`security
`issues,
`switching
`techniques,
`synchronization/timing techniques, telegraphy, telephony, TV (UHF,
`VHF, cable TV HDTV\
`traffic
`issues,
`transmission/propagation
`concerns (signal loss/attenuation, transmission lines), video technology,
`and wave propagation/measurement terminology.
`
`(Jd., citing CMIB, Ex. 19 (Federal Standard 1 037C), p. 2 (lEW A Y00056770) (emphasis added).)
`
`Considering the above Standard, a "telecommunications-related field" could include various
`
`technology fields, e.g, "fiber optics communications" and "facsimile types and techniques, both
`
`of which are not related to the "digital wireless communications" discussed in the Asserted Patents
`
`and accordingly, the Staff believes Respondents' proposal provides for a more appropriate level of
`
`ordinary skill in the art of the Asserted Patents. (!d.)
`
`Discussion
`
`Having considered the parties positions, I find that in this instance I concur with the Staff
`
`and the Respondent and find that a proper definition of a Person of Ordinary Skill in the Art
`
`(POSIT A) is a person having "a Bachelor of Science degree in electrical engineering or a related
`
`field, and around two years of experience in the design or implementation of wireless
`
`8
`
`SONY Exhibit 1004 - 0011
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`

`

`communications systems, or the equivalent," or would have "six years of experience in the_design
`
`or implementation of wireless communications systems, or the equivalent."
`
`C.
`
`Undisputed Term- CDMA
`
`The parties have agreed the term "CDMA" (code division multiple access) should be
`
`construed consistent with its plan and ordinary meaning; which is the claim language itself.
`
`(CBPS at 2 and RBPS at 2.) This was the Staffs position all along. (SMIB at 12.) Since there is
`
`no intrinsic evidence capable of supporting any other possible meaning I concur with the
`
`construction agreed to by the parties. Accordingly, since CDMA is a term of art that had a well-
`
`understood meaning in 2001 to a POSIT A that is the meaning it will have in this investigation.
`
`(See Tr. 28:20-28; 39:6-17.)
`
`D.
`
`Disputed Term- "original audio signal representation in packet format"
`
`"original audio signal representation in packet format"
`("original audio signal representation in the form of packets")
`("digital audio ... representation signal in the form of a packet")
`
`Complainant's
`Proposed Construction
`
`Respondent's
`Pr.oposed Construction
`
`Staff's
`Proposed Construction
`
`One-E-Way does not believe
`that these related claim terms
`need to be construed.
`However, if the Court is
`inclined to construe the terms,
`then One-E-Way proposes that
`they should be construed
`consistent with their ordinary
`meamng as:
`
`"one or more packets in a
`digital format that include
`high quality audio data
`corresponding to the original
`audio signal"
`
`"one or more packets in a
`digital format that carry
`uncompressed, high quality
`audio data representing the
`original audio signal"
`
`The Staff is of the view that
`these related claim terms do
`not require construction.
`
`If construction is required,
`however, then the Staff .
`proposes that these related
`claim terms should be
`· construed consistent with their
`plain and ordinary meaning,
`which is the claim language
`itself.
`
`9
`
`SONY Exhibit 1004 - 0012
`
`

`

`The Parties' Positions
`
`Respondent's Position
`
`As the foregoing chart indicates, Respondent contends the term at issue requires the data to
`
`be "uncompressed." The basis for Respondent's argument is its contention that the prosecution
`
`history of the '391 patent (ihe original patent in this series) indicates the patent was rejected
`
`because the examiner would not patent claims involving compressed, packetized audio signals
`
`under the applicable G.729 standard or coding implementation. (RMIB at 19.) In response,
`
`Complainant One Way allegedly sought to overcome the rejection by distinguishing its invention
`
`from the compression teaching ("compression algorithm for voice") as being incapable of
`
`transmitting the required signal. (!d.; RBPS at 2.)
`
`Respondents allege One-E-Way's "repeated" file wrapper statements constitute a clear and
`
`unmistakable disavowal of a compression algorithm in the context of these terms, thus narrowing
`
`their scope. (RMIB at 20; RBPS at 2.) Respondents argue that Complainants repeated
`
`characterization of their invention as requiring "high quality audio" it limited or narrowed the
`
`meaning "original audio signal representation in the packet format" and its related terms. (RMIB
`
`at 20.) More specifically, Respondents contend that by characterizing its invention as one
`
`requiring "high quality audio," One-E- Way limited the term at issue to systems transmitting only
`
`high: quality audio data since the G. 729 standard was incapable of sending high quality audio as
`
`required by the present invention. (!d. at 21.)
`
`. Respondents allege that when One-E-Way clearly and unequivocally distinguished its
`
`invention from the Li prior art when it argued to the USPTO the "compression algorithm" was the
`
`reason the G.729 standard could not transmit the required high quality audio. (!d.) Respondents
`
`allege that One Way's prosecution history arguments go beyond merely disclaiming the G. 729
`
`method of compression. (Jd. at 22.) Specifically, Respondents allege that One-E-Way provided
`
`10
`
`SONY Exhibit 1004 - 0013
`
`

`

`.. r
`
`no description of any type of compression necessary to produce "high quality audio" beyond its
`
`efforts to disclaim G.729 compression. (!d.) In closing, Respondent argue that ifOne-E-Way
`
`really argues the claims require reproduced audio signal be high quality and may be compressed,
`
`its failure to describe the level of quality or compression, other than disclaiming the compression
`
`G.729 can produce means persons of ordinary skill in the art would be unable to ascertain what
`
`level of compression would meet the claim language and this would be urtclear. (!d.)
`
`Complainant's Position
`
`One;E-Way notes Respondents' base their argument on prosecution history, i.e.,
`
`disavowals allegedly made during prosecution. (CMIB at 7; CBPS at 3.) Moreover, One-E-Way
`
`points out that Respondents acknowledged that "based on the claim language itself in the
`
`specification, we would agree there is no limitation to a particular audio standard. But in view of
`
`the prosecution history, we believe there is a disclaimer of compressed audio." (CBPS at 3, citing
`
`Tr. 50:7-17.)
`
`One-E-Way alleges that its point of contrast over the prior art G.729 to the USPTO was
`
`that the "present invention" supports "high quality audio" rather than compression. (CMRB at 8;
`
`CBPS at 3.) Hence, One-E-Way contends it did not disavow compression because it did not
`
`contrast its claim concerning "high quality audio" to the prior art. (CMRB at 8.) One-E-Way
`
`notes that it only described "the present invention" (to the USPTO) as supporting "high quality
`
`audio" not in terms of compression or lack thereof. (CBPS at 3.) Accordingly, One-E-Way notes
`
`that it: (1) never contrasted compression; (2).never represented it packet did not include
`
`compressed data; and (3) never made any clear and unmistakable disavowal related to
`
`compression. (/d.)
`
`11
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`SONY Exhibit 1004 - 0014
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`

`

`Staff's Position
`
`The Staffs position is consistent with that ofOne-E-Way. (SMIB at 15.) In fact, the Staff
`
`agrees almost precisely with Complainant's position that One-E-Way's (the applicant's)
`
`statements are directed to high quality audio data rather than compression algorithms. (!d.) Thus,
`
`according to the Staff, because the statements at issue "discuss the 0.729 compression algorithm
`
`in the context of high quality audio data, rather than compression by itself, the applicant's
`
`statements do not clearly and unmistakably demonstrate disavowal of compression." (!d.; see
`
`SBPS at 1.)
`
`The Staff observes, whereas here, statements made in the prosecution history are subject to
`
`multiple reasonable interpretations, "[t]here is no 'clear and unmistakable' disclaimer." (SBPS at
`
`2, citing Scandisk Corp. v. Memorex Products, Inc., 415 F.3d 1278, 1287 (Fed. Cir. 2005).)
`
`Discussion
`
`As cogently noted by the Staff, the parties agree the patent claims at issue do not provide
`
`support for Respondents' proposed requirement for "uncompressed" audio data for there is no
`
`mention ofuncompressed audio data therein. (SMRB at 11-12; SBPS atl; Tr. at 50:7-17.) The
`
`parties also agree the patent specification provides no support for a requirement for
`
`"uncompressed" audio data for there is no such discussion by which a POSIT A that would
`
`prohibit such compression. (/d.) The parties recognize the only argument for limiting the term at
`
`issue to "uncompressed audio data are based upon statements to the USPTO about the G. 729
`
`standard made in connection to the applicant's reference to "high quality audio data" during
`
`prosecution of the '391 Patent. (!d.; Tr. 52:18-53:20.)
`
`Based upon my analysis of the representations made by the applicant during the
`
`prosecution of the '391Patent, I concur with the position ofOne-E-Way and the Staff. Thus, I find
`
`no clear and unmistakable disavowal of any kind of compression of audio data.
`
`12
`
`SONY Exhibit 1004 - 0015
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`

`

`I find no reason to construe the claim term "original audio signal representation in packet
`
`format" beyond the plain and ordinary meaning of the claim language itself: To the extent there is
`
`ever any issue as to whether the packets referred to can include high quality audio data I would
`
`answer that in the affirmative and also hold the question of compression is irrelevant to
`
`construction of the language at issue because as the Staff points, out, compression is not excluded.
`
`E.
`
`Disputed Term -"reduced intersymbol interference coding"
`
`"reduced intersymbol interference coding"
`("reduced inter-symbol interference coding")
`
`Complainant's
`· Proposed Construction
`
`Respondent's
`Position
`
`Staff's
`Proposed Construction
`
`Indefinite.
`
`One-E-Way does not believe
`that these related claim terms
`need to be construed.
`However, if the Court is
`inclined to construe the terms,
`then One-E-Way proposes that
`they should be construed
`consistent with their ordinary
`meaning as:
`
`"coding that reduces
`intersymbol (inter-symbol)
`interference"
`
`The Parties' Positions
`
`The Staff is of the view· that
`these related claim terms do
`not require construction.
`
`If construction is required,
`however, then the Staff
`proposes that these related
`claim terms should be
`construed consistent with their
`plain and ordinary meaning,
`which is "coding that reduces
`intersymbol (inter-symbol)
`interference."
`
`Respondent's Position
`
`Respondents argue the term at issue is indefinite because it is confusing and assert that:
`
`(1) the term is not used in the field of wireless communications systems and (2) the term appears
`
`.only in the claims of the asserted patents (not defined or baselined otherwise in the patent
`
`specifications). (R.i\!1IB at 23-24, 26; RBPS at 3.) Hence, the terms at issue are indefinite for
`
`failure to provide reasonable certainty as to their scope. (RMIB at 25.)
`
`13
`
`SONY Exhibit 1004 - 0016
`
`

`

`Respondents assert the parties really do not dispute that what "intersymbol interference"
`
`means, but that the problem is that the claims added "reduced" on the front end and "coding" on
`
`the back end to create "reduced intersymbol interference coding.". (!d.) According to the
`
`Respondents, there is nothing in either the '258 or '391 patents to explain how the coding would
`
`be worked or implemented or how much intersymbol interference would be reduced as compared
`
`to what. (!d.) Respondents contend the net effect of the problems they point out is that the term
`
`"reduced intersymbol interference coding" cannot be ascertained with reasonable certainty.
`
`(RMIB at 27.)
`
`Respondent further allege there is no category of codings understood by artisans with the
`
`goal of reducing intersymbol interference. (!d.) Instead, "in the field of wireless communications
`
`systems, codings are typically defined by their structure and operation instead of an abstract goal
`
`or benefit they provide." (!d.) Respondents thus allege two pieces of information are missing_,
`
`·i.e., (1) what is the baseline by which to judge the coding reduction; (2) what degree of reduction
`
`of intersymbol interference beyond the baseline qualifies the coding to be a reduction. (RMIB at
`
`27-28.)
`
`Complainant's Position
`
`One-E-Way contends the terms at issue require no construction and if any is needed, the
`
`plain and ordinary meaning will serve. (CMIB at 46.) One-E-Way notes that Respondents do not
`
`dispute the ordinary meaning of the term "intersymbol interference" but instead, make three
`
`arguments regarding indefiniteness. (CMIB at 46-47.)
`
`One-E-Way refutes Respondents' argument that the claims recite no pap:icular category or
`
`classification of codings by point out there was no requirement for it to recite, in its patent claims,
`
`any particular categories or classifications of codings. (CMIB at 4 7.) Instead, One-E-Way noted
`
`it claimed the concept of coding to reduce intersymbol interference and provided a specific
`
`14
`
`SONY Exhibit 1004 - 0017
`
`

`

`example in the parent patent specification using a "transform" coding to reduce intersymbol
`
`interference. (!d.) Moreover, during the '391 Patent prosecution, One-E-Way confirmed (on
`
`June 21, 2011) that "[t]he lSI mitigation ofthe present invention is performed by, among other
`
`things, the claimed encoder ... " (!d., citing '391 Patent File History, Response dated June 21,
`
`2011 at 4 (1EWAY00000645).) Continuing, One-E-Way noted it is black letter law that a patent
`
`applicant may recite a concept in a patent claim that is broader than a specific example in the
`
`patent specification. (!d., citing Saunders Group, Inc. v. Comfortrac, Inc., 492 F.3d 1326, 1331
`
`(Fed. Cir. 2007) (reversing district court's construction because the intrinsic evidence did not
`
`require limiting the claimed "pneumatic