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GLOBESPANVIRATA v. TEXAS INSTRUMENT

April 6, 2005.

GLOBESPANVIRATA, INC., Plaintiff,
v.
TEXAS INSTRUMENT, INC., THE LELAND STANFORD JUNIOR UNIVERSITY and its BOARD OF TRUSTEES, and STANFORD UNIVERSITY OTL, LLC, Defendants. TEXAS INSTRUMENT, INC., Counterclaimant, v. GLOBESPANVIRATA, INC. and CONEXANT SYSTEMS, INC. Counterclaim Defendants.



The opinion of the court was delivered by: GARRETT BROWN, District Judge

MARKMAN OPINION

INTRODUCTION

This is a case involving antitrust and patent infringement claims. On June 12, 2003, Plaintiff Globespanvirata, Inc. ("Plaintiff") filed suit against Defendants Texas Instruments, Inc., The Leland Stanford Junior University and its Board of Trustees, and Stanford University OTL, LLC (collectively referred to as "Defendants"). On July 6, 2004, Plaintiff filed an Amended Complaint, alleging violations of antitrust laws including, inter alia, monopolization and unlawful conspiracy in restraint of trade in violation of the Sherman Act § 1. (Pl.'s 1st Am. Compl.). Plaintiff also seeks a declaratory judgment of non-infringement, invalidity and unenforceability of the patents. (Id.). Defendants filed an Amended Answer on July 30, 2004 and asserted counterclaims against Plaintiff. Defendants allege that Plaintiff's products infringe three patents which are owned by Defendants. (Defs.' Answer & Countercl.). The Court bifurcated the case — staying the antitrust phase of the litigation until the infringement claims are resolved. Proceeding with the patent infringement phase of this lawsuit, the parties asked this Court to construe the disputed patent claim terms pursuant to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996).

  On September 2, 2004, the parties timely filed their Opening Claim Construction briefs with the Court. Thereafter, the parties submitted their Reply briefs on September 23, 2004.*fn1 After having reviewed the submissions and concluding that the parties did not clearly identify the disputed claim terms and issues, the Court requested that the parties submit a Joint Claim Construction Chart ("Chart") clearly setting forth the disputed issues. On January 20, 2005, the parties jointly submitted the Chart which identified a total of thirty-five disputed claim terms, Plaintiff and Defendants' proposed constructions for each term, and also stipulated to the construction of several other terms. A Markman hearing was held on January 31, 2005.

  BACKGROUND

  There are three patents-in-suit. All of the patents relate to the field of digital communications, specifically data transmission using multicarrier modulation transmission systems. The inventions represent advancements in digital subscriber line ("DSL") and asymmetric digital subscriber line ("ADSL") technology, which enable large amounts of digital data to be transmitted over regular telephone lines.*fn2 DSL/ADSL technology is a key factor in the improvement of telecommunication services — one of the most notable and widely used being high-speed Internet access. The patents are aimed at increasing the speed and reliability of the transmission of data in DSL/ADSL technology and other telecommunication systems.

  The first patent-in-suit, U.S. Patent No. 5,479,447, is entitled "Method and Apparatus for Adaptive, Variable Bandwidth, High-Speed Data Transmission of a Multicarrier Signal Over Digital Subscriber Lines." U.S. Patent No. 5,479,447 (issued Dec. 26, 1995) ("the `447 Patent"). The patent issued from the U.S. Patent and Trademark Office ("PTO") on December 26, 1995. It issued from Application No. 57,301, which was filed with the PTO on May 3, 1993. Peter S. Chow and John M. Cioffi are the named inventors. Defendant The Board of Trustees of the Leland Stanford Junior University owns the `447 Patent. Defendant Texas Instruments, Inc. ("TI") is an exclusive licensee who has the right to bring an action for infringement based on this patent. The patent discloses two principle objectives of the invention. The first is "to provide a method and apparatus for calculating the optimal transmission bandwidth during on-line system initialization." `447 Patent, col. 5, ll. 32-36. The second objective is that the method and apparatus are "real-time adaptive during normal system operation, with continuous data transmission, to compensate for changes in transmission medium characteristics." Id. at col. 5, ll. 38-41. The patent describes the concept of a continuously adaptive transmitter working in conjunction with a continuously adaptive receiver as distinct over the prior art. Id. at col. 6, ll. 2-5.

  The second patent-in-suit, U.S. Patent No. 5,400,322, is entitled "Updating of Bit Allocations in a Multicarrier Modulation Transmission System." U.S. Patent No. 5,400,322 (issued Mar. 21, 1995) ("the `322 Patent"). The patent issued from the PTO on March 21, 1995. It issued from Application No. 109,489, which was filed with the PTO on August 20, 1993. Ronald R. Hunt and Peter S. Chow are the named inventors. TI is the owner of this patent. The object of the invention is "to provide an improved method of updating allocations of bits to carriers in a transmission system using multicarrier modulation." `322 Patent, col. 2, ll. 40-42. Updating bit allocations is necessary in this type of system to respond to the varying signal-to-noise ratios ("SNRs"), which result from changes in the temperature or traffic on the transmission channels. The invention provides the desirable effect of updating bit allocations to accommodate such changes in the channels.

  The third patent-in-suit, U.S. Patent No. 5,596,604, is entitled "Multicarrier Modulation Transmission System with Variable Delay." U.S. No. Patent 5,596,604 (issued Jan. 21, 1997) ("the `604 Patent"). The patent issued from the PTO on January 21, 1997. It issued from Application No. 107,200, which was filed with the PTO on August 17, 1993. John M. Cioffi, Po Tong, James T. Aslanis and Antoinette H. Gooch are the named inventors. TI also owns this patent. The invention addresses a problem known in the art as impulse noise, which causes errors on transmission channels. `604 Patent, col. 1, ll. 57-67. To reduce errors caused by impulse noise, the invention employs techniques known as forward error correction coding ("FECC") and codeword interleaving. The patent contemplates the application of these techniques in a manner that results in the maintenance of high reliability and minimized transmission delay for the various types of data signals. Id., col. 2, ll. 25-27.

  DISCUSSION

  I. LAW OF CLAIM CONSTRUCTION

  The first step in a patent infringement analysis is to define the meaning and scope of the claims of the patent. Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). Claim construction, which serves this purpose, is a matter of law exclusively for the court. Id. at 979. When construing claims, the court must first consider the intrinsic evidence. Specifically, the focus of the court's analysis must begin and remain on the language of the claims, "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.'" Interactive Gift Express, Inc. v. Compuserve, Inc., 256 F.3d 1323, 1331 (Fed. Cir. 2001) (quoting 35 U.S.C. § 112, ¶ 2).

  Generally, there is a presumption that the words of a claim will receive the full breadth of its ordinary meaning. NTP, Inc. v. Research In Motion, Ltd., 392 F.3d 1336, 1346 (Fed. Cir. 2004). The ordinary meaning may be derived from a variety of sources including the claim language, the written description, drawings, the prosecution history, and dictionaries or treatises.*fn3 Id. The presumption may be rebutted if the patentee acted as his or her own lexicographer by clearly setting forth a definition of the claim term unlike its ordinary and customary meaning. Brookhill-Wilk 1, LLC. v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298-99 (Fed. Cir. 2003). Any intent by the patentee to redefine a term must be expressed in the written description, and must be sufficiently clear. Merck & Co, Inc. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1370 (Fed. Cir. 2005). The presumption may also be overcome "if the inventor has disavowed or disclaimed scope of coverage, by using words or expressions of manifest exclusion or restriction, representing a clear disavowal of claim scope." Brookhill-Wilk, 334 F.3d at 1299. To ascertain the true ordinary meaning of a term, one must not refer to relevant dictionaries in isolation, but more importantly, in the context of its surrounding text in the claim, the written description and the prosecution history. Brookhill-Wilk, 334 F.3d at 1300; NTP, Inc., 392 F.3d at 1346. Such intrinsic evidence should be "examined through the viewing glass of a person skilled in the art." Brookhill-Wilk, 334 F.3d at 1300.

  In consulting dictionaries to discern the ordinary meaning, such reference should be limited to dictionaries that are contemporaneous with the patent. Brookhill-Wilk, 334 F.3d at 1299. Dictionaries published after the patent issued may not accurately reflect the meaning of a term to a person of ordinary skill in the art as of the grant of the patent, and therefore should not be considered in a claim construction analysis. Id. If more than one possible dictionary definition exists, the claim term may be interpreted to encompass all definitions if they are consistent with the usage of the term in the intrinsic record. Id. at 1300; Texas Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1203 (Fed. Cir. 2002).

  The court may consult extrinsic evidence, including expert opinion, to guide its comprehension of the relevant technology in accordance with the understanding of a skilled artisan. Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003). Such evidence, however, need not be considered by the court if it is able to determine the ordinary meaning based on the intrinsic evidence and appropriate dictionaries or treatises. Vitronics Corp. v. Conceptroncs, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996). Moreover, extrinsic evidence may not be relied upon to contradict or vary the meaning of the term as used in the claim. Altiris, 318 F.3d at 1369.

  Lastly, the court must be mindful of the well-settled rule "that while proper claim construction requires an examination of the written description and relevant prosecution history to determine the meaning of claim limitations, additional limitations may not be read into the claims." Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 831 (Fed. Cir. 2003); see also In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (noting the "general claim construction principle that limitations found only in the specification of a patent or patent application should not be imported or read into a claim.").*fn4 II. THE DISPUTED CLAIM TERMS

  A. The `447 Patent

  The first seven disputed claim terms are found in Claims 1 and 2 of the `447 Patent. Claim 1, an independent claim, and Claim 2, a dependent claim, read as follows:
1. In a multicarrier data transmission system that transmits data continuously over dispersive, noisy subscriber loops for digital service from a telephone central office to a user location and corresponding digital service between transmitters and receivers at said user location and said central office, a method for implementing variable transmission bandwidth as a function of line frequencyvariable attenuation, noise power spectrum, a set of programmed and possibly variable carrier target bit-error-rates, and a programmed and possibly frequency-variable transmit power mask to improve data transmission speed or to improve performance margin at any given transmission speed subject to a power or power-spectral-density constraint, said method using subcarrier-indexed measurements of channel gains, channel noises, desired carrier bit-error-rates, and the programmed power mask to provide subcarrier-indexed estimates of transmission quality and to maintain the transmission quality at high levels, comprising the steps of:
(a) sorting the subcarrier-indexed estimates of the transmission quality, scaled by the desired subcarrier bit-error-rates, into an invertible ordering for assessment of the relative data-carrying capabilities of the subcarriers at initialization and/or during data transmission;
(b) calculating bit and energy allocation tables for said multicarrier data transmission system based on the sorted subcarrier-indexed estimates for either improving aggregate transmitted data rate as fixed performance margin with said power or power-spectral-density constraint, or improving performance margin at a fixed data rate with said power or power-spectral-density constraint;
(c) communicating said bit and energy allocation tables between the transmitters and the receivers of said multicarrier transmission systems; and (d) implementing said bit and energy allocation tables in coordination between the transmitters and the receivers during initialization of said multicarrier transmission system and/or during simultaneous transmission of said digital data by said multicarrier transmission system.
2. A multicarrier transmission system as recited in claim 1 and further comprising the steps of:
communicating changes in bit allocation by removing a single or several bits from those bits allocated to a carrier or subcarrier with a quality estimate below a specified threshold and placing that bit or bits on a second subcarrier or carriers with a quality estimate exceeding a second specified threshold; and
coordinating the implementation of said changes in both the transmitters and the receivers by communication through a bidirectional overhead data channel, said overhead data channel being simultaneously present with the user data channel on the same communication line.
`447 Patent, col. 12, l. 54-col. 13, l. 41.

  1. "a programmed and possibly frequency-variable transmit power mask"

  The first disputed claim term is found in both Claims 1 and 2. The parties initially posed two issues before the Court — specifically, whether the term is a claim limitation and if so, what is the proper construction. At the Markman hearing, however, the parties agreed that the true dispute centers around the first issue. Defendants argue that the term "a programmed and possibly frequency-variable transmit power mask," which appears in the preamble portion of Claim 1, is not a claim limitation and therefore does not require construction. Plaintiff asserts that the term is a claim limitation. As indicated at the hearing, the Court will construe the claim term, but will reserve its decision at this juncture as to whether the term is a limitation.*fn5 (See Tr. of Markman Hearing at 14:1-21 ("Tr.")). Accordingly, the Court adopts the construction to which the parties stipulated at the hearing. (See id. at 9:19-10:6.) Therefore, the meaning of disputed term [1] "a programmed and possibly frequency-variable transmit power mask" is "a programmed limit on the maximum amount of power to be transmitted in each of the several carriers which can vary by carrier."*fn6

  2. "the programmed power mask"

  With regard to the second disputed claim term, the parties stipulated at the Markman hearing that if the Court determines that the term is a claim limitation, it should be construed in the same manner as the first disputed term. (See Tr. at 5:1-9). The Court will likewise reserve its decision regarding the claim limitation issue and will adopt the parties' stipulated construction. Accordingly, disputed term [2] "the programmed power mask" means "a programmed limit on the maximum amount of power to be transmitted in each of the several carriers which can vary by carrier."

  3. "power or power-spectral-density constraint"

  With regard to the third disputed claim term, Plaintiff does not offer a proposed construction, but rather asserts that it is indefinite and invalid. Plaintiff interprets Defendants' proposed construction as one that is "effectively synonymous" with the meaning of "power mask." (Pl.'s Reply at 11). Based on the claim language and specification, Plaintiff asserts that the terms "powerspectral-density constraint" and "power mask" cannot be synonymous. (Pl.'s Reply at 11; Tr. at 19:15-20:5).

  Plaintiff is correct. It is clear, however, that Defendants do not propose that "power constraint" and "power mask" mean the same thing. At the hearing, Defendants described the system as having a "power constraint" which serves as an overall limit to the transmitter, as well as a "power mask" which limits the power in each individual carrier. (Tr. at 17:9-13, 18:1-2). Further, the plain language of Claim 1 clearly differentiates between the terms "power mask" and a "power or power-spectral-density constraint." Moreover, the specification also differentiates between these terms:
When given a set of initial SNR estimates of the orthogonal carriers of a multicarrier communication system, a set of target bit error rates for the carriers, and an arbitrary transmit power mask together with an overall transmit power constraint, the present invention provides a method of determining the initial bit and energy allocations, and therefore the corresponding bandwidth.
`447 Patent, col. 7, ll. 11-17 (emphases added). Therefore, these terms are not interchangeable.

  Regarding the proper construction of "power or power-spectral-density constraint," Defendants propose that the term should be read in the disjunctive. Specifically, Defendants argue that the transmitter is subject to either a "power constraint" ora "power-spectral-density constraint."*fn7 (Tr. at 16:13-24). A plain reading of the claim language supports this proposition. Defendants submit that "power constraint" refers to "an absolute limit on the transmitter power," and "powerspectral-density constraint" is "one that may vary by frequency." (Id.). Defendants noted at the hearing that this definition for "power constraint" directly originates from the specification. The basis of Defendants' definition for "power-spectral-density constraint," however, is unclear.

  The Court agrees with Defendants' construction of "power constraint" as a limit of maximum power based on the specification. A preferred embodiment of the invention, as explained in the specification, describes an algorithm associated with the initialization procedure. This states that the mathematical term Etarget equals the "total input energy, or power constraint at the transmitter," and Emaxj is the "maximum energy, or power, allowable in [a] carrier due to the transmit power mask." `447 Patent, col. 8, ll. 17-22; col. 9, ll. 49-54. Thus, it appears that Etarget is the maximum amount of energy at the transmitter and Emaxj is the maximum energy that can be used by each individual carrier. Additionally, the specification states that "in no event is [Etarget/k (k being the number of used carriers)] greater than the allowable amount of individual carrier transmit energy due to the power mask." `447 Patent, col. 8, ll. 25-27. This description comports with Defendants' proposed construction for "power constraint."

  The Court is then left to determine the proper construction of "power-spectral-density constraint." In defining this term, the record is limited to several dictionary definitions cited by Defendants, the claim language, specification, and the opinion of Defendants' expert, Tim A. William, Ph.D. ("Dr. Williams"). Defendants' proffered construction is based on a series of dictionary definitions. Such definitions, however, are taken from dictionaries that were published well after the patent issued. The Federal Circuit noted that reliance on dictionaries and treatises should be limited to those that are contemporaneous with the patent. Brookhill-Wilk, 334 F.3d at 1299 (declining consideration of references published after the date of the patent grant because they did not reflect the definitions that would have been given to them by a person of ordinary skill in the art). In the present case, the `447 Patent was filed in May 1993 and issued in December 1995. Defendants submitted references dated between 1998 and 2004. As such, the Court will not consider these references in its claim construction analysis.

  The claim language and specification is devoid of a clear meaning for "power-spectraldensity constraint." As a result, the Court is left with the expert opinion of Dr. Williams for insight as to how a skilled artisan would interpret this term. Dr. Williams opines that a person of ordinary skill in the digital communications field would interpret "power-spectral-density constraint" to mean "a limit for the maximum transmit power allowed at particular frequencies." (Williams Report, ¶ 140). In light of the absence of contradictory evidence in the claims and the specification, the Court will accept Dr. Williams' opinion as indicative of the proper construction.

  Therefore, based on the evidence set forth in the record, the Court will adopt Defendants' proposed construction for this term. Accordingly, disputed term [3] "power or power-spectraldensity constraint" means "an absolute limit in the transmitter power or a limit in maximum transmit power allowed at particular frequencies."

  4. "subcarrier-indexed estimates of transmission quality"

  The next disputed term appears in both the preamble and body of Claim 1. The issue presented with respect to this term is whether the "subcarrier-indexed estimates of transmission quality" must be measured by the four factors appearing in the preamble, namely channel gains, channel noises, desired carrier bit-error-rates, and the programmed power mask. (See Tr. at 24:1-19, 28:8-20).

  Plaintiff contends that this term is a claim limitation because the antecedent basis for the term appearing in the body of the claim, specifically in step (a), is derived from the term in the preamble. `447 Patent, col. 13, ll. 2-6. At the hearing, Plaintiff introduced the prosecution history for the `447 Patent in support of its proposition.*fn8 The prosecution history shows that Claims 1 through 15 of the `447 Patent were initially rejected by the PTO under 35 U.S.C. § 112. The PTO indicated that the original term that appeared in the body of the claim, namely "the measured subscriber channel quality estimates," lacked a clear antecedent basis. See Office Action dated June 21, 1994 at 2. In response to the Office Action, the patentees amended the claim by adding "subcarrier-indexed estimates of the transmission quality" to both the preamble and body of the claim.

  Unfortunately, what the PTO's reaction was to that amendment remains a mystery. Did the PTO allow the claims, recognizing that the amendment added sufficient specificity to the claims? Or, did the PTO require more? Because Plaintiff failed to submit the complete prosecution history, the Court does not know the answer to these simple, but potentially dispositive questions. Nonetheless, assuming arguendo the answer to the first question is in the affirmative, Plaintiff then argues that the method encompassed by Claim 1 incorporates the limitations associated with the term as set forth in the preamble. Plaintiff characterizes this as a "clear prescribed method ? for determining sub-carrier quality estimates." (Tr. at 28:8-10). Thus, Plaintiff argues that the claim requires the estimates of transmission quality be determined "by reference to channel gains, channel noises, desired carrier bit-error-rates, and the programmed power mask." (Tr. at 28:17-20; see also Chart at 2).

  Conversely, Defendants argue that the claim does not require the estimates to be based on these four factors. Rather, Defendants assert that the subcarrier-indexed estimates may be measured using a variety of methods, some of which may include all or none of the factors listed in the preamble. According to Defendants, estimates may be measured simply by SNRs. Defendants contend that the specification clearly supports their argument. It states the following:
When given a set of initial SNR estimates of the orthogonal carriers of a multicarrier communication system, a set of target bit error rates for the carriers, and an arbitrary transmit power mask together with an overall transmit power constraint, the present invention provides a method of determining the initial bit and energy allocations, and therefore the corresponding transmission bandwidth.
`447 Patent, col. 7, ll. 10-17 (emphasis added). Defendants argue that nothing in the specification suggests that the "set of initial SNR estimates" must be measured by channel gains, channel noises, desired carrier bit-error-rates, and the programmed power mask — factors which only appear in the preamble.

  This Court agrees with Defendants. Generally, a preamble is a limitation of the invention if it "recites essential structure or steps, or if it is necessary to give life, meaning, and vitality to the claim." Catalina Mktg. Int'l v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002) (quotations omitted). However, if the patentee's use of the preamble merely states an intended purpose or use, and the patentee defined a structurally complete invention in the body of the claim, the preamble is not limiting. Id. Furthermore, although claim scope may be limited if a particular disputed term derives antecedent basis from the preamble, the Court's determination must be based on an examination of the patent as a whole, "to gain an understanding of what the inventors actually invented and intended to encompass by the claim." Id. (citing Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989).

  This Court concludes that "subcarrier-indexed estimates of transmission quality" need not be measured by any of the four factors listed in the preamble. Although the prosecution history suggests that the claim was amended to include an antecedent basis in the preamble for the disputed term, this alone does not support Plaintiff's contention that the claim should be read to require the four factors. Simply because the term appears in the preamble, the Court is not required to import all the words surrounding the term. Plaintiff has not cited any case law that would suggest otherwise. Additionally, and perhaps more importantly, the claim language itself, specifically the language contained in Claims 5 and 6, indicate that subcarrier quality estimates may be made "through the computation of an average signal-to-noise measure on a subcarrier . . . [or] . . . the computation of an average signal-to-noise ratio multiplied by a subcarrier dependent programmed reliability factor. . . ." `447 Patent, col. 13, l. 65 — col. 14, l. 10. Thus, the claims themselves demonstrate that subcarrier-indexed estimates of transmission quality need not be measured by four factors, but may be measured, for example, through the computation of SNRs. This comports with Defendants' assertion.

  Furthermore, one of the preferred embodiments described in the specification shows why Plaintiff's argument is incorrect. The preferred embodiment describes an algorithm consisting of several steps involved in the initialization procedure. `447 Patent, col. 7, l. 35 — col. 8, l. 56. The first step involves computing SNR estimates, or estimates of transmission quality. The fifth step involves the maximum energy allowable in the carrier as defined by the power mask. Plaintiff's requirement that the estimates be measured based on, among other things, the power mask would effectively exclude this preferred embodiment from the claim scope, since it is not until after the calculation of estimates that the power mask comes into play.

  As the Federal Circuit has articulated, "a claim construction that would exclude the preferred embodiment `is rarely, if ever, correct and would require highly persuasive evidentiary support.'" Rexnord Corp. v. Laitram Corp, 274 F.3d 1336, 1342 (Fed. Cir. 2001) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996)). Plaintiff has not shown sufficient evidence to support its narrow construction. Accordingly, it must be rejected. Therefore, this Court concludes that disputed term [4] "subcarrier-indexed estimates of transmission quality" does not require that the measurements of the estimates be determined by any of the four factors enumerated in the preamble.

  5. "sorting the subcarrier-indexed estimates of the transmission quality, scaled by the desired subcarrier bit-error-rates, into an invertible ordering"*fn9

  The dispute with respect to this term concerns the proper meaning of "sorting." Plaintiff submits that this term means "reordering the subcarrier-indexed estimates of the transmission quality, which have been scaled by the desired subcarrier bit-error-rates, into an arrangement of transmission quality estimates that is capable of being put back into the original subcarrier-indexed order." (Chart at 2). In essence, Plaintiff argues that the term "sorting" as used in the claim means "reordering" or "sorting into a new order." (Pl.'s Opening Br. at 10-11).

  Plaintiff relies on the claim language and the opinion of its expert, Dirk Hartogs, Ph.D. ("Dr. Hartogs"). Dr. Hartogs opines that a person of ordinary skill in the art would understand "that the term `sorting' as used in Claim 1 requires a re-ordering of the subcarrier-indexed estimates of transmission quality for each carrier." (Hartogs Report, ¶ 41). Dr. Hartogs heavily relies upon an example of the invention as illustrated in the preferred embodiment. It states: "[s]ort the resulting SNR(i)/'(i)'s into descending order and label them. . . . The mapping from the original carrier labels to the sorted carrier labels is stored and is invertible." `447 Patent, col. 7, ll. 49-52; col. 8, l. 65 — col. 9, l. 1. Based on this disclosure, Dr. Hartogs suggests that a person of ordinary skill in the art would understand "that the result of the sort is an ordering of estimates from the highest to the lowest." (Hartogs Report, ¶ 42).

  Conversely, Defendants argue that the claim does not require a reordering of the data. Defendants contend that the term is used in a manner that is consistent with its ordinary and customary meaning. (Defs.' Opening Br. at 33-34.) Defendants offer a general definition of the word "sort" from Webster's New World Dictionary. According to this reference, "sort" means "to arrange according to class or kind." WEBSTER'S NEW WORLDDICTIONARY 563 (1995). Defendants also provide a technical definition for "sort" from the International Organization for Standardization. In this reference, "sort" means "[t]o segregate items into groups according to specified criteria without necessarily ordering the items within each group." INT'L ORG.FORSTANDARDIZATION, ISO 2382-6 Info. Processing Sys. — Vocabulary — Part 6: Preparation and Handling of Data 10 (2d ed. 1987) (emphasis in original).

  This Court agrees that the term "sorting" does not require reordering of the data. The ordinary meaning of the word "sort" suggests that mere placing or arranging into a class is sufficient. Although the claim uses the words "sorting . . . into an invertible ordering," Plaintiff's construction rests on the incorrect assumption that "invertible ordering" is synonymous with a "new order." This assumption is unsupported. The word "invertible" does not mean "new." The plain meaning of the word "invert" means "to reverse the order, position, direction . . . of." WEBSTER'S NEW WORLD DICTIONARY 313 (1995). Thus, something that is "invertible" is something that is capable of being reversed in order, position or direction thereof. Consequently, an "invertible ordering" is an ordering capable of being reversed, not necessarily a new order.

  The Court concludes that the preferred embodiment should not limit the meaning of the term. To sort the estimates into a "descending order," as described in the preferred embodiment, is only one example of how the estimates may be "sorted." To adopt the requirement that the estimates must be "sorted," and thus "reordered," on this basis would violate the general prohibition against importing a limitation from the specification into the claims. See Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 831 (Fed. Cir. 2003). Therefore, Plaintiff's construction must be rejected.

  Accordingly, the Court concludes that disputed term [5] "sorting the subcarrier-indexed estimates of the transmission quality, scaled by the desired subcarrier bit-error-rates, into an invertible ordering" requires mere "sorting" of the estimates, i.e., segregating the estimates into groups based on specified criteria, and does not require reordering.

  6. "scaled"

  The parties stipulated at the Markman hearing that "scaled" means "changed by a factor." (Tr. at 45:22). Consequently, the Court adopts that construction. 7. "(b) calculating bit and energy allocation tables for said multicarrier data transmission system based on the sorted subcarrier-indexed estimates"

  The issue presented with respect to the next disputed term concerns the order in which the steps of the claim must be performed. Plaintiff argues that step (a), the sorting step, must occur before step (b), the calculating step. Plaintiff contends that the plain language of Claim 1, and the interconnection of each step, indicate an implicit requirement that the steps occur in a particular order. (Pl.'s Opening Br. at 9). Specifically, Plaintiff asserts that the calculating step must occur after the sorting step because the calculation of bit and energy allocation tables are "based on the sorted subcarrier-indexed estimates." `447 Patent, col. 13, ll. 11-12 (emphasis added). Plaintiff asserts that something must be in existence before anything can be "based on" it. (Tr. at 47:20-24). Conversely, Defendants contend that the claim does not require a particular order of steps. Citing Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003), Defendants argue that if a claim recites steps, but not an order, there is a presumption that the sequence of steps is not required.

  In Altiris, the Federal Circuit explained, "[u]nless the steps of a method actually recite an order, the steps are not ordinarily construed to require one. However, such a result can ensue when the method steps implicitly require that they be performed in the order written." Id. at 1369 (quoting Interactive Gift Express, Inc. v. Compuserve Inc., 256 F.3d 1323 (Fed. Cir. 2001)). There is a twopart inquiry for determining whether a method claim, which does not recite a specific order, must be carried out in the order in which it is written.

  First, we look to the claim language to determine if, as a matter of logic or grammar, [the steps] must be performed in the order written. . . . If not, we next look to the rest of the specification to determine whether it directly or implicitly requires such a narrow construction. If not, the sequence in which such steps are written is not a requirement. Id. (quotations omitted). In Altiris, the Federal Circuit concluded that the trial court erred by imposing a limitation on a method claim that required the steps to be performed in a particular order. Id. at 1371. The court concluded that nothing in the claim language logically or grammatically indicated that the "setting step" of the method had to be performed in a specific order. The court further concluded that the written description did not contain any statements concerning the importance of the order of steps, or any evidence disclaiming any order of steps. Id.

  In the present case, the Court likewise concludes that the steps of Claim 1 and 2 need not be performed in the order in which the steps are written. First, the Court does not find support in the claim language supporting such a narrow construction. Although the words "based on" suggest that the calculation of the bit and energy tables are determined only after the estimates are sorted, Plaintiff's proposed construction would impose an absolute requirement that step (b) occurs after step (a) at all times. The plain language of the claim does not indicate that this is always the case.

  Second, the written description does not support a narrow construction. As the court found in Altiris, here there are no statements in the specification suggesting that the method must be performed in the way Plaintiff proposes, nor are there statements indicating that the method would not work if the "calculating step" is performed before the "sorting step." While Plaintiff's argument focuses on events occurring in one subcarrier, the specification describes a dynamic system in which multiple carriers are acting in concert. For example, the specification states:
Another objective of the present invention is to provide a method and apparatus that is also real-time adaptive during normal system operation, with continuous data transmission, to compensate for changes in transmission medium characteristics.
`447 Patent, col. 5, ll. 37-41. Additionally, Claim 16 describes "a multicarrier transmission system having transmitters and receivers to transmit and receive data continuously over communication lines." `447 Patent, col. 20, ll. 27-29. Thus, it is possible that "the calculating step" is being performed before "the sorting step" at any given time.

  Plaintiff relies on the preferred embodiments, or algorithms in the specification, in support of its argument that the steps must occur in a particular order. (Hartogs Report, ¶ 43). Once again, however, limitations appearing in the preferred embodiment should not be imported into the claims themselves without justification. See Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 831 (Fed. Cir. 2003). As explained above, the Court finds no justification.

  Accordingly, with regard to disputed term [7], the Court construes the claim as not requiring that steps (a) and (b) be performed in any particular order.

  8. The Remaining Disputed Claim Terms of the `447 Patent

  The remaining terms of the `447 Patent concern means-plus-function limitations, and therefore will be analyzed together. Means-plus-function terms are governed by 35 U.S.C. § 112, ¶ 6. This section provides that:
[a]n 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 (Thomson/West 2005). This statutory provision allows patentees to "claim an element of a combination functionally, without reciting structures for performing these functions." Apex, Inc. v. Raritan Computer, Inc., 325 F.3d 1364,1371 (Fed. Cir. 2003). In exchange for the convenience of employing § 112, ¶ 6, the patentee must disclose structure in the specification that is clearly linked or associated with the claimed function. Budde v. Harley Davidson, Inc., 250 F.3d 1369, 1377 (Fed. Cir. 2001).

  In construing a means-plus-function claim limitation, the court must engage in a two-part inquiry. Id. at 1376. First, the court must identify the particular function that is claimed. Id. Second, the court must determine the corresponding structure that performs the claimed function. Id. Failure to disclose adequate corresponding structure renders the claim's scope indefinite, and therefore invalid under § 112, ¶ 2. Id. A finding that a claim containing a means-plus-function limitation lacks structural support must be supported by clear and convincing evidence that the specification does not disclose structure sufficient to perform the recited function. Id. at 1376-77. Such a determination must be made from the viewpoint of a skilled artisan. Id. at 1376.

  In determining whether § 112, ¶ 6 applies to a particular claim term, the use of the word "means" is central to the court's analysis. Generally, the use of the word "means" creates the presumption that § 112, ¶ 6 does apply, whereas the absence of the word "means" creates the presumption that it does not apply. Personalized Media Communications, LLC v. Int'l Trade Comm'n, 161 F.3d 696, 703-04 (Fed. Cir. 1998). The presumption may be rebutted by the intrinsic and extrinsic evidence. The court should focus its inquiry on whether "the claim as properly construed recites sufficiently definite structure to avoid the ambit of § 112, ¶ 6." Id. at 704. Moreover, the court should inquire as to whether the term has a "reasonably well understood meaning in the art." Apex, Inc., 325 F.3d at 1372 (Fed. Cir. 2003) (quoting Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1583 (Fed. Cir. 1996).

  In the present case, the disputed terms are found in Claims 11 and 12 of the `447 Patent. Claim 11, an independent claim, and Claim 12, a dependent claim, read as follows: 11. A multicarrier communication system comprising: a [11] transmitter means and a [12] receiver means communicatively linked together by a datalink, the signal carrying characteristics of which are randomly variable, said [11] transmitter means including,
means for establishing a plurality of frequency domain subchannels for respectively communicating various quantities of data bits selected from a stream of data bits;
[8] means for measuring the capability of the datalink to efficiently communicate the data bits in each said subchannel and for developing an optimum energy allocation and an optimum data bit allocation for each said subchannels; and
means for causing an input data stream to be divided and modulated onto a plurality of frequency domain carriers, each corresponding to one of said subchannels for transmission over said datalink to said [12] receiver means, the quantity of data bits transmitted over each said subchannel being selected as a function of said optimum data bit allocation and said [12] receiver means including,
means for monitoring the quality of the transmission over each said subchannels; and
[9] means for returning an indication of the monitored quality to said [11] transmitter means.
12. A multicarrier communication system as recited in claim 11 wherein said [11] transmitter means further includes:
[10] means responsive to said indication of monitored quality and operative to change the data bit allocation among said subchannels to improve the quality of the transmission.
`447 Patent, col. 14, l. 58 — col.15, l. 26 (emphases added).

  The parties disagree as to whether the terms "transmitter means" and "receiver means" are subject to 35 U.S.C. § 112, ¶ 6. Defendants argue that these terms do not have associated corresponding functions, and therefore do not invoke the presumption of means-plus-function under § 112, ¶ 6. It is Defendants' position that "transmitter means" and "receiver means" actually refer to a "transceiver containing a transmitter and a receiver," similar to the central office transceiver 27, or customer premises transceiver 28, which are depicted in Figure 5a of the patent. (Chart at 4-5). Conversely, Plaintiff argues that "transmitter means" and "receiver means," as first used in the claim, are associated with the means enumerated after the ...


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