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IN THE UNITED STATES DISTRICT COURT FOR THE W ESTERN DISTRICT OF W ISCONSIN - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - APPLE, INC. and NeXT SOFTW ARE, INC., f/k/a NeXT COM PUTER, INC., Plaintiffs, v. M OTOROLA, INC. and M OTOROLA M OBILITY, INC., Defendants. - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - In this patent infringement case, plaintiffs Apple, Inc. and NeXT Software, Inc. contend that the smart phone products and associated software sold by defendants M otorola, Inc. and M otorola M obility, Inc. infringe 15 of plaintiffs' patents. Defendants have filed counterclaims, contending that plaintiff Apple, Inc. is infringing six of defendants' patents. The parties' request for claims construction is now before the court. A claim construction hearing was held July 22, 2011. I construe the terms as provided below. Also, I will grant plaintiff's motion for leave to file supplemental claim construction evidence, dkt. #113, because both sides had an opportunity to address this evidence at the hearing. (Throughout this opinion, I refer to Apple, Inc. and NeXT Software, Inc. collectively as "plaintiff." I refer to the M otorola entities as "defendant.")

OPINION and ORDER 10-cv-662-bbc

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OPINION A. Claims to be Construed There are 21 patents at issue in this case, with the following 10 patents and 12 claim terms at issue in the motions for claims construction: (1) "long term energy value for [the/a] fram e of inform ation" from defendant's United States Patent No. 5,490,230, titled "Digital Speech Coder Having Optimized Signal Energy Parameters"; "extracting from [the recovered signal/the speech coded inform ation] at least one param eter" from the `230 patent; "transm it overflow sequence num ber" from defendant's United States Patent No. 5,319,712, titled "M ethod and Apparatus for Providing Cryptographic Protection of a Data Stream in a Communication System"; "transm itting . . . from the subscriber unit to the com m unication system " from defendant's United States Patent No. 5,572,193, titled "M ethod for Authentication and Protection of Subscribers in Telecommunications Systems"; "pream ble sequence" from defendant's United States Patent No. 6,175,559, titled "M ethod for Generating Preamble Sequences in a Code Division M ultiple Access System"; "outer code" from the `559 patent; "software com ponent architecture" from plaintiff's United States Patent No. 5,929,852, titled "Encapsulated Network Entity Reference of a Network Component System" & United States Reissued Patent No. RE39,486, titled "Extensible, Replaceable Network Component System"; "connection inform ation" from plaintiff's United States Patent No. 6,424,354, titled "Object-Oriented Event Notification System with Listener Registration of Both Interests and M ethods"; "during runtim e" from plaintiff's United States Patent No. 6,275,983, titled "Object-Oriented Operating System"; "storing m eans for storing a specific set of events of which said at least one

(2)

(3)

(4)

(5)

(6) (7)

(8)

(9)

(10)

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event consum er is to be inform ed" from plaintiff's United States Patent No. 5,566,337, titled "Method and Apparatus for Distributing Events in an Operating System"; (11) "dynam ic binding" from plaintiff's United States Patent No. 5,481,721, titled "M ethod for Providing Automatic and Dynamic Translation of Object Oriented Programming Language-Based M essage Passing Into Operation System M essage Passing Using Proxy Objects"; and "programming m odules" from plaintiff's United States Patent No. 6,493,002, titled "M ethod and Apparatus for Displaying and Accessing Control and Status Information in a Computer System."

(12)

The parties proposed specific definitions for each of the claim terms at issue, and to some degree focus on the specific words they believe will best define the term. However, at this stage of the proceedings, the only disputes that must be resolved are ones relating to the presence of specific limitations in the claims, not the ability of a juror to understand the language. I have learned that attempting to sort out the exact words to use to define a term often leads to trouble. As I explained in another case: In my experience, attempting to resolve the parties' disputes by providing specific definitions to a given claim term is nothing but an invitation to a new round of arguments at a later stage about the meaning of the court's construction, or about the hidden implications of the language adopted. It is counterproductive to resolve claims construction disputes by replacing them with new ones for the parties to dispute about at summary judgment. Sandisk Corp. v. Zotek Electronic Co., Ltd., 2010 W L 3743540, *2 (W .D. W is. Sept. 22, 2010). M oreover, a word-by-word definition for a term is rarely if ever necessary to resolve the concrete dispute between the parties that serves as the basis for construing the term to begin with. There may be times when providing specific definitions is useful, especially if it could help the jury understand the terms better. However, it would be premature to address such concerns at this stage. Therefore, despite the parties' best attempts to define the terms, I decline to sort out their

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disagreements about which specific phrases to use to describe the terms. This means that for the majority of the disputed terms, it was necessary only to consider the parties' proposed constructions that would place specific limitations on the scope of the claims. For plaintiff's patents, I focused primarily on the limitations proposed by defendant and for defendant's patents, I focused primarily on the limitations proposed by plaintiff, considering the other parties' proposed construction when necessary.

B. Standard on Claim Construction

The construction of the claims at issue in a patent infringement case is a legal determination to be made by the court. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996); Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996). In interpreting an asserted claim, the court should look first to the claims themselves. Teleflex, Inc. v. Ficosa North America Corp., 299 F.3d 1313, 1324-25 (Fed. Cir. 2002). Generally, claim terms are given their "ordinary and customary" meaning, which is the meaning the term would have to a person of ordinary skill in the art as of the filing date of the patent application. Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005). In addition to considering the ordinary meaning of a claim term, the court must consider the context of the surrounding words of the claim and the specification. Id. It is in the specification that the patentee provides a written description of the invention that allows a person of ordinary skill in the art to make and use the

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invention, Markman, 52 F.3d at 979, and at times even "set[s] forth an explicit definition for a claim term that could differ in scope from that which would be afforded by its ordinary meaning." Rexnord Corp. v. Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001);

Vitronics, 90 F.3d at 1582.

DEFENDANT'S PATENTS C. `230 Patent The `230 patent relates to speech coding, which involves the process of converting analog speech signals into a compressed, digital version of human speech that can be transmitted from one location to another. `230 patent, dkt. #5-3, "Technical Field." The patent describes a method for reducing the amount of transmitted data and thereby reducing the amount of bandwidth required to transmit speech. In particular, the encoder in the `230 patent divides speech into frames and subframes, and further divides each subframe into pitch and white noise components. (The white noise component is called the "codebook" component in the patent.) These components are transmitted separately and then recombined at the receiver. Id. at Fig. 1. The parties' disputes relate to the transmission and reception of the white noise component of speech. The speech coder in the `230 patent transmits the white noise component through a set of predetermined white noise signals found in a codebook. Id. at col. 3, lns. 23-30. The coder must also either send a "gain value" to the decoder along with the index values (this is the method in prior art), or information that would allow the decoder to determine the

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appropriate gain value. Id. at col. 1, lns. 58-61. The gain value is necessary so that the decoder may scale the codebook sample to the original speech. Id. at col. 3, lns. 30-39. Rather than transmitting the gain information directly, the speech coder described in the `230 patent transmits, once per frame, a "long term energy value" for the frame and other values representing energy for each subframe. Id. at col. 6, lns. 5-9. The decoder uses these values to determine the proper gain, then combines the properly gain-scaled white noise component with the properly gain-scaled pitch component to create an approximation of the original speech. According to the `230 patent, sending a long term energy value once for each frame, rather than gain values for every subframe, produces higher quality reconstructed speech without using too much bandwidth. Id. at col. 2, lns. 36-44; col. 5, lns. 26-37. The parties' claim construction disputes concern the type of data that must be transmitted by a coder to a decoder and particularly, what type of information constitutes the "long term energy value."

1. "long term energy value for [the/a] frame of information" (clms. 6, 7 and 8) Surrounding Claim Language Plaintiff's Proposed Construction Defendant's Proposed Construction

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[cl. 6]: A method for recovering information that relates to gain information for excitation components of a speech sample, wherein the speech sample is digitized to provide a frame of information comprising at least one subfram e, the method comprising the steps of: A) receiving at least one parameter comprising a long term energy value for the frame of information; [cl. 7]: extracting from the recovered signal at least one parameter comprising a long term energy value for the frame of information; [cl. 7] [cl. 8]: extracting from the speech coded information at least one parameter comprising a long term energy value for information, wherein a speech sample is digitized to provide the frame of information comprising at last one subframe;

"the total energy for the current frame of speech"

plain meaning of the terms; or "a value representative of the energy in a block of data"

For this term, the parties' disputes are (1) whether the "long term energy value" must be for the current frame of speech, meaning the same frame as the later recited pre-component and recovered component, or whether it might be for some other frame; and (2) whether the "long term energy value" must be the whole, or total, energy value for a single frame of data or whether it could be merely the energy for certain subframes or components. Plaintiff seeks to limit the "long term energy value" to the total energy in the current frame of data, arguing that the claims,

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specification and repeated clarifications made by the applicant over the course of prosecution confirm that the long term energy value is the "total energy for the current frame of speech." Initially, plaintiff argued that there was a third dispute, namely, whether the long term energy value must be "actual" energy, rather than merely a value representative of energy. Plaintiff contended that the long term energy value was "actual" energy, Plts.' Br., dkt. #91, at 20-22, while defendant contended that the long term energy value was necessarily a number representative of energy. Dft.'s Br., dkt. #108, at 76. At the claim construction hearing, plaintiff abandoned its argument, stating that it was "not arguing that the actual energy itself has to be transmitted," agreeing that "it's a number that's sent," and stating that there was nothing "unclear" about this issue. Hrg. Trans., dkt. #118, at 24. Therefore, there is no real dispute whether the long term energy value is "actual" energy or "representative" of energy.

a. The "long term energy value" must be for the same frame of speech as the later recited "precomponent" and "recovered component" The claims recite the process of recreating speech data for a single frame of speech. Plaintiff contends that the "long term energy value" is an energy value for that same frame of speech and that the long term energy value is used to calculate the gain values for the components in that frame. Plaintiff contends that although it might be possible to use an energy value from one frame to calculate the gain values for a different frame, the claims at issue relate to energy values from one frame only. The claim language supports plaintiff's proposed limitation. ACTV, Inc. v. W alt Disney

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Co., 346 F.3d 1082, 1088 (Fed. Cir. 2003) (court must consider context of surrounding words of claim when construing term). The claims discuss only one frame of information and all references to "frame" in the claims are to the same frame. For example, claim 6 describes "a method for recovering information that relates to gain information for excitation components of a speech sample" that has been digitized to provide "a frame of digital information comprising at least one subframe." `230 patent, dkt. #5-3, at col. 9 lns. 7-10 (emphasis added). The decoder receives "at least one parameter comprising a long term energy value for the frame of information," id. at lns. 12-13 (emphasis added), as well as information for at least one component of speech. The use of "the frame of information" suggests that the frame of

information is the same frame of digital information in which the "speech sample" was digitized. Similarly, the claims include descriptions of using a long term energy value and a "precomponent" to provide a "recovered component" (claims 7 and 8) or a "recovered excitation component" (claim 6). In all of the asserted claims, the recovered component is "of the speech sample," meaning the components are from the same sample that was converted to the digital frame of information. In addition, the claims recite a relationship between the long term energy value of a frame and the energy of a component of the same frame. The claims require that the "gain" used to provide the recovered component be "proportional to the long term energy value." This makes sense. The greater the long term energy value for a frame of information, the greater the energy of the recovered component. The specification also supports plaintiff's proposed limitation, explaining how the long

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term energy value for a frame is used to provide a recovered component for the same frame. In particular, the specification explains how the long term energy value of a frame, represented by Eq(0), is divided into approximate values for each subframe within the frame. `230 patent, at col. 4, lns. 28-46. Nothing in the specification suggests that the long term energy value from a completely different frame could be used to produce a recovered component in the current frame or that any of the mathematical relationships described in the specification represent relationships between energies in multiple frames, let alone explains how this could be done. Defendant spends several pages in its briefs arguing that neither the claim language nor specification requires that the decoder receive a long term energy value for the "current frame." At the same time however, defendant concedes in its response brief that "the long term energy value for a frame of information is used in the claim to calculate the gain for a pre-component in that frame of information." Dft.'s Resp. Br., dkt. #108, at 81. This is exactly what plaintiff is contending, and defendant has not pointed to any language in the claims, specification or prosecution history that would support any other interpretation of the claim language. In fact, the majority of defendant's arguments are related to how the decoder determines or calculates the long term energy value. Defendant contends that the long term energy value may be calculated by looking to data from surrounding frames in addition to or instead of the frame that contains the pre-component (the frame referred to in the claim), pointing out that "there is nothing in the claims that dictates how a system designer calculates the `long term energy value' which is used to determine the gain of the pre-component" and that "the patent does not prohibit a designer from determining the `long term energy value' by looking outside

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the frame of the pre-component." Dft.'s Br., dkt. #108, at 76. Defendant's arguments do not address the limitation proposed by plaintiff, which relates solely to whether the long term energy value must be a value for the same frame as the precomponent described in the claim. Plaintiff's proposed limitation does not address how the long term energy value is calculated. In addition, defendant's arguments are not relevant to its own proposed construction of "long term energy value," which is simply "a value representative of the energy in a block of data." Thus, because the claim language and specification support plaintiff's proposed limitation and because defendant has conceded that the limitation is accurate, I conclude that the long term energy value in claims 6, 7 and 8 is a value for the same frame of information referred to throughout the claims.

b. The "long term energy value" must be the sum of energies for each component for each subframe of a frame Plaintiff contends that the term "long term energy value" in claims 6, 7 and 8 is referring to the value of the "total" energy for a frame of speech. In other words, a value representing the energy of a single subframe or a single component would not qualify as a "long term energy value." Defendant disagrees, contending that long term energy value can represent the energy of any "block of data." Defendant's proposed construction is vague, overly broad and fails to distinguish the long term energy value from any other energy values referred to in the claim. I need not consider it further. Turning to plaintiff's proposed limitation, I agree with plaintiff that "long term energy

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value" is the value for an entire frame and not a subframe. The claims themselves state that the long term energy value is for a "frame of information," not for a subframe. The specification states that the long term energy value "comprises an energy value that is generally representative of a single frame." `230 patent, dkt. #5-3, at col. 4, lns. 34-46. Also, the specification uses Eq(0) to represent the long term energy value and defines it as the "quantized long term signal energy for total frame." Id. at col. 4, ln. 46. According to the specification, Eq(0) "can be calculated for a complete frame of digitized speech samples," is transmitted from "time to time" and "does not need to be transmitted with each subframe's information." Id. at col. 5, lns. 27-32; see also id. at col. 6, lns. 4-7 (explaining that Figure 5 shows "quantized signal energy value Eq(0) (505), calculated for each complete frame of digitized speech samples, [which] is transmitted once per frame."). Also, the specification describes how the "residual energy" pertaining to a specific subframe can be determined by dividing the long term energy value by the product of a "filter power gain" and the number of subframes in each frame. All of these references suggest that the long term energy value is a value for a frame and not a value for a single subframe. Defendant's only argument that the long term energy should not be limited to a single frame is that such a limitation would read out the possibility of a frame consisting of only one subframe, something clearly allowed by the claim language. However, limiting the long term energy value to energy contained in a single frame places no limitations on the number of subframes that must be present in a frame. Thus, both the claims and specification make it clear that the long term energy value is a value representing a frame of information. The claims and specification also make it clear that the long term energy value cannot be

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for a single speech component. In fact, although defendant contends in one part of its brief that the long term energy value may be the value of a single component across the frame, defendant later concedes that "the claim distinguishes between the `long term' energy and the energy of a pre-component." Dft.'s Resp. Br., dkt. #108, at 75. Specifically, when the claim is referring to an energy value for a subframe or a particular speech component, the claim language refers to a "pre-component" or a "component" with an energy value. See, e.g., `230 patent, at col. 9, lns. 18-19 (claim 6); col. 9, lns. 42-43 (claim 7); col. 10, lns. 24-25 (claim 8). In addition, the "Background" and "Summary of the Invention" sections of the `230 patent distinguish between the various energies in a frame, discussing the drawbacks of transmitting gain values for individual components and proposing the transmission of "long term energy for the speech signal" as a solution. Id. at col. 1, lns. 51-58 (describing drawbacks of transmitting gain

information); col. 2, lns. 36-44 ("So configured, the more important information (the long term energy value) is transmitted less frequently, and hence may be transmitted in a relatively highly protected form without undue impact on the transmission medium capacity."); see also id. at col. 5, lns. 29-37. These references establish that the long term energy value is something different from the energy value of a single component in a single subframe. Having concluded that the long term energy value does not represent the energy of a subframe or a single speech component, I turn to the final question, which is whether the long term energy value must be the sum of all energies for each component for each subframe within the frame. Defendant contends that the long term energy value could be the value of "residual energy" in a frame, which would fall under neither the restriction against energy for one subframe

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nor the energy of a single component. (The parties disagree about the meaning of "residual energy," though they both agree that it is some combination of energy including both a pitch and noise component. Hrg. Trans., dkt. #118, at 8-10, 20-21.) However, neither the specification nor the prosecution history supports defendant's position. The specification defines the long term energy value as "an energy that is generally representative of a single frame." `230 patent, dkt. #5-3, at col. 4, lns. 35-36. The applicant clarified the meaning of long term energy value during the prosecution of the patent. The application was rejected twice because the claims, and specifically the claims at issue in this case, were vague and indefinite as to the meaning and relationship of the various "energy" terms they recited. The examiner stated that the "relationship between `total energy', `long term energy value', `a first parameter', `a second parameter', `overall energy', `a speech sample' and a `portion of the digitized speech sample'" was unclear. Dkt. #92-5, June 12, 1995 Rejection, at 1. In response, the applicant amended claim 1 to include a step of "determining total energy of the frame of information to provide a long term energy value." Dkt. #92-5, Aug. 16, 1995 Resp., at 2. Also, the applicant amended what are the present claims 6, 7 and 8 to clarify the relationships between the long term energy value, the gain value and the energy value of a precomponent, requiring that the gain value be "proportional to the long term energy value and inversely proportional to the energy value" of the pre-component." Id. at 4-5. Finally, in

perhaps the most significant amendment to the claims related to the present dispute, the applicant struck the language reciting "a long term energy value for at least one excitation component of the signal," and changed it to "a long term energy value for a frame of

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information." Id. The applicant explained its amendments to the examiner, stating that, "[r]egarding the terms `total energy' and `long term energy value', the applicants note that these terms, as used in claim 1, represent the same thing. That is, claim 1 calls for the `total energy' to be determined `to provide [the] long term energy value'. These terms represent Eq(0). . . ." Id. at at 5. The applicant went on to explain the relationship between the long term energy value and other energies, including pitch and noise components and residual energy, by referring to the equations set forth in the specification. Id. at 6-7. The applicant explained that the long term energy value was used to determine the "residual energy" of a subframe. Later in the response, the applicant stated that the relationships described with respect to claim 1 were the same relationships recited in claims 7 and 8. Id. at 8 ("Perhaps most significantly, both claims 7 and 8 are amended to include `details or relationships to physical elements or measurements.' These relationships, as claimed, are discussed in section 3 above [in the context of discussing claim 1]." In other words, the long term energy value represents the "total energy" for a frame in each of the claims, as the applicant had already explained. The applicant went on to emphasize that the "overall energy value" of a pre-component is "determined for a subframe," and the long term energy value is "determined for a . . . frame." Id. At the claim construction hearing, defendant conceded that the long term energy value described in the specification and represented by Eq(0) in the various equations in the specification is the "total energy" for a frame. Hrg. Trans., dkt. #118, at 13-14. However, defendant contends "that there are many different ways and many different sets of these

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variables that you can send in order to be able to calculate the necessary information on the receiver side to reproduce the speech sample." Id. at 12. This may be true, but the court cannot ignore limitations that the "patentee itself regarded as comprising its inventions and represented to the PTO." M icrosoft Corp. v. M ulti-Tech Systems, Inc., 357 F.3d 1340, 1349 (Fed. Cir. 2004). During prosecution of the `230 patent, the examiner rejected the claims at issue

specifically because "no specific manipulation or method [was] claimed, ensuring that any and all mathematical relationships are included . . . ." Dkt. #92-5, Aug. 16, 1995 Resp. at 7. The applicant responded by amending the claims and contending that the additional "limitations[s]" and details regarding the various energies would insure that not "all mathematical relationships" are covered by the claims. Id. at 8. In addition, the applicant relied on the specific equations found in the specification to explain the meaning of the terms used in the claims, including the long term energy value and its relationship to the residual energy. Limitations of the scope of a claim using the patent's prosecution history require a clear statement in the history showing "reasonable clarity and deliberateness" in creating the limitation. University of Pittsburgh of Commonwealth System of Higher Education v. Hedrick, 573 F.3d 1290, 1296 (Fed. Cir. 2009). W hen taken in conjunction with the amendments to the claims and references to the equations in the specification, the statements by the applicant are clear, deliberate statements that reflect the patentee's understanding that the long term energy value in a frame is the total energy in a frame. Thus, the long term energy value cannot be the residual energy in a frame. (Indeed, defendant does not even attempt to explain how, in light of the applicant's explanations and the equations in the specification, the residual energy can

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both be calculated using the long term energy value and be the long term energy value.) Accordingly, I conclude that the long term energy value must be the total energy for a frame of information.

2. "extracting from [the recovered signal/the speech coded information] at least one parameter" (clms. 7 and 8) Surrounding Claim Language Plaintiff's Proposed Construction Defendant's Proposed Construction " p r o c e s s i n g performed on [the recovered signal/the speech coded in form ation ] to obtain a parameter"

[cl. 7]: A method for recovering information that relates to gain information for excitation components of a speech sample, wherein the speech sample is digitized to provide a frame of information comprising at least one subframe, the method comprising the steps of . . . C) extracting from the recovered signal at least one parameter comprising a long term energy value for the frame of information; [cl. 8]: extracting from the speech coded information at least one parameter comprising a long term energy value for information . . . .

"taking a transmitted value out of the [speech s ig n a l/s p e e c h c o d e d information]"

The parties' dispute regarding the term "extracting . . . at least one parameter" is related to their disputes regarding the nature of the long term energy value. Although it is not readily apparent from their proposed constructions, the parties' dispute regarding this term boils down to one issue: whether the long term energy value must be transmitted to the receiver in one

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parameter or whether the receiver can determine the long term energy value by processing information from multiple parameters. Plaintiff contends that the "parameter comprising the long term energy value" must be recovered as part of the transmitted signal or speech coded information, while defendant contends that the receiver may need to process the recovered signal to obtain the long term energy value from multiple parameters. The claim language supports plaintiff's proposed interpretation. The claims state that the receiver "extract[s] . . . at least one parameter comprising a long term energy value . . . ." Although defendant argues that this phrase means that there is one long term energy value that may be "comprised of" or "made up of" more than one parameter, Dft.'s Resp. Br., dkt. #108, at 84-85, defendant's interpretation of the phrase relies on an improper use of the word "comprising." As the Court of Appeals for the Federal Circuit has held repeatedly, the term "comprising" is well understood in patent law to mean "including but not limited to." Exergen Corp. v. W al-M art Stores, Inc., 575 F.3d 1312, 1319 (Fed. Cir. 2009); In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009); Predicate Logic, Inc. v. Distributive Software, Inc., 544 F.3d 1298, 1304 (Fed. Cir. 2008). Thus, the claims do not describe a "long term energy value comprising one or more parameters," as defendant suggests. Rather, the claims should be read as reciting "at least one parameter including, but not limited to, a long term energy value." This reading supports plaintiff's position that although the receiver may extract multiple types of parameters, it must extract at least one parameter that is the long term energy value. Plaintiff's interpretation is also supported by the abstract, specification and prosecution history. The abstract states that the invention is

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A speech coder and decoder methodology wherein pitch excitation and codebook excitation source energies are represented by parameters that are readily transmissible with minimal transmission capacity requirements. The parameters are the long term energy value, a short term correction factor which is applied to the long term energy value, and proportionality factor(s) that specify the relative energy contribution of the excitation sources to the short term energy value. `230 patent, dkt. #5-3, Abstract (emphasis added). Thus, according to the abstract, the long term energy value is one of the parameters that is transmitted to the receiver. Nothing in this language suggests that the long term energy value is a value that will be calculated by applying several parameters to a mathematical equation, as defendant suggests. Additionally, the specification states repeatedly that the long term energy value parameter is "transmitted." For example, the specification states that [A] quantized signal energy value Eq(0) can be calculated for a complete frame of digitized speech samples. This value is transmitted from the coder to the decoder from time to time as appropriate to provide the decoder with this information. Id. at col. 5, lns. 26-37. See also id. at col. 6, lns. 4-7 ("The quantized signal energy value Eq(0) (505), calculated for each complete frame of digitized speech samples, is transmitted once per frame."). This language confirms that the long term energy value is transmitted as a determined value, not as several pieces that would require processing by the decoder to calculate the value. In addition, the applicant stated at several points during the prosecution that the parameter containing the long term energy value is transmitted; nothing about the applicant's description supports a conclusion that it is transmitted in multiple pieces. In particular, the examiner rejected the application in part because "[n]othing is shown to explain how the information sent is coded for transmission." Dkt. #92-5, Dec. 18, 1990 Rejection at 1. The applicant responded that

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The Examiner argues that no information is provided regarding `transmission' of the gain parameters. The application, however, is replete with numerous references to transmission activity in general, and of the gain information in particular. Consider the following excerpts: . . . This value [the quantized signal energy value Eq(0)] is transmitted from the coder to the decoder from time to time as appropriate to provide the decoder with this information. Dkt. #92-5, June 18, 1991 Resp. at 4-5. Defendant contends that despite these references in the specification and prosecution history, the patent supports additional processing at the decoder to determine the long term energy value. In particular, defendant points to the language in the specification describing Figure 2, which describes one embodiment of the invention in a radio. Figure 2 discloses a radio with an antenna for receiving a speech coded signal and an "RF unit (203) [that] processes the received signal to recover speech coded information." `230 patent, dkt. #5-3, at col. 7, lns. 5660. "This [speech coded] information is provided to a parameter decoder (204) that develops control parameters for various subsequent processes." Id. (emphasis added). Defendant contends that this description of Figure 2 establishes that in some embodiments, there is a "parameter decoder" that performs some type of processing on the speech coded information in order to develop "control parameters," including the parameters containing a long term energy value. Defendant's interpretation of Figure 2 is not persuasive. The text of the patent mentions the "parameter decoder" only one time, in the context of describing Figure 2. As defendant itself explains, "the digital bit stream reproduced in the receiver may itself contain values that are useful to the receiver. In other words, specific bits of the reproduced digital bit stream may represent a particular value that can be used by the receiver." Dft.'s Br., dkt. #96, at 95. The most obvious function of the parameter decoder is to separate this stream into its constituent

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transmitted parameters and provide them to those "subsequent processes." Even if it is true that the parameter decoder performs types of "processing" in addition to this separation of the digital bit stream into usable parameters, nothing in the patent or prosecution history suggests that this processing includes calculation of a long term energy value or that the processing occurs at the "extracting" steps in claims 7 and 8. The only processing described with any detail in the claims or specification is the processing that occurs after the parameters have been transmitted and extracted, when the parameters are processed to produce a pre-component and the appropriate gain. This processing occurs in steps (E), (F) and (G) of claim 7 and steps (B)(3)-(5) of claim 8, and the specification describes the processing that occurs at these steps. In contrast, all of the descriptions in the specification concerning the transmission of the long term energy value support plaintiff's argument that the coder determines and transmits the value and that the decoder receives the value without further processing. In sum, the main purported point of novelty in the `230 patent is the selection of particular data values, identified as "parameters," including a long term energy value, for transmission. The patent emphasizes the transmission of the long term energy value in a high quality and protected form and does so repeatedly. There is no support for concluding that the long term energy value is determined by the decoder using multiple, unidentified pieces of data sent at unidentified and unlimited times. Accordingly, I conclude that the "extracting . . . at least one parameter" does not encompass processing multiple parameters to obtain a long term energy value.

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B. `712 Patent: "transmit overflow sequence number" (cl. 17) Surrounding Claim Language Plaintiff's Proposed Construction Defendant's Proposed Construction "a multi-bit increm enting number that updates w i t h i n t h e tran sm itter w hen the packet sequence number rolls over"

a method for providing cryptographic protection of a data stream, comprising . . . updating a transmit overflow sequence number as a function of the packet sequence n um ber; and encrypting, prior to communicating the packet and the packet sequence number on the physical layer, the packet as a function of the packet sequence number and the transmit overflow sequence number.

"a num ber that is updated w ithin the transmitter when the packet sequence number rolls over, but it is not communicated to the receiver"

The `712 patent discloses a particular method for encrypting data packets transmitted and received in a communication system. `712 patent, dkt. #5-2, Abstract. Under the method described in Figure 1 of the specification, a transmitter divides data streams into 21 byte packets. Id. at col. 3, lns. 63-65. Each packet is assigned a 7-bit sequence number that serves as an identifier of the packet, identified as the "data sequence number" in asserted claim 17. Id. Because 7 bits can represent only 128 packets, the transmitter "rolls over" the sequence number after every 128 packets, and an "overflow sequence number" keeps track of the number of times the sequence number has been rolled over. Id. at col. 3, lns. 65-66. Next, a "pseudorandom" bit generator generates a "key" for encrypting the packets. A combination of this key, the sequence number and the overflow sequence number is used to generate an encryption mask, which is used to encrypt the packets. Id. at col. 4, lns. 19-23. The encrypted packets are transmitted from the transmitting unit to the receiving unit.

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The parties' dispute concerns the "transmit overflow sequence number." Actually, the parties agree as to what the "transmit overflow sequence number" is. However, they dispute whether the overflow sequence number may be transmitted to the receiver along with the encrypted packets. Plaintiff contends that the overflow sequence number may never be

transmitted to the receiving side. Defendant objects to plaintiff's proposed negative limitation, contending that it is not required by the claim language or specification. The claim language and specification suggest that there is no reason to transmit the overflow sequence number to the receiver. The claim recites, "encrypting, prior to

communicating the packet and the packet sequence number on the physical layer . . . .," indicating that although the "packet and packet sequence number" are communicated to the receiver, the overflow sequence number is not. Similarly, the specification says repeatedly that the "encrypted plurality of packets and the packet sequence number associated with each packet are transmitted," but is silent regarding the overflow sequence number being transmitted. Id. at col. 5, lns. 28-32. Also, other claims in the `712 patent refer to a "receive overflow sequence number" generated independently by the receiving device, suggesting that the transmitter need not send an overflow sequence number to the receiver. `712 patent, cls. 1, 2, 5, 11, 12, 18. The specification explains that the receiver receives and "extracts" the packet sequence number and derives the overflow sequence number from the packets. Id. at col. 4, lns. 15-17, col. 5, lns. 3335. If the transmit overflow sequence number was transmitted, there would be no need for the receiver to derive a receive overflow sequence number. That being said, neither the claim language nor the specification prohibits transmission of

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the overflow sequence number or gives any clear indication of what happens to the number. There is simply silence on the issue. The asserted claim 17 focuses only on the encryption process, and says only that the "transmit overflow sequence number" is used to encrypt a packet "prior to communicating the packet and the packet sequence number on the physical layer." The claim says nothing about what must happen to the transmit overflow sequence number after it is used for encryption. The language regarding the communication of "the packet and packet sequence number" relates to the timing of the encryption, not necessarily whether the overflow sequence number is transmitted. Also, although other claims include language regarding the independent generation of an overflow sequence number by a receiver that would make transmission of the transmit overflow sequence number unnecessary, defendant is not asserting these claims against plaintiff and they do not impose any limitations on claim 17. Thus, the question whether the overflow sequence number may be transmitted is not answered in the claim language or specification. However, the question was answered during prosecution of a related Japanese patent. During prosecution of the Japanese counterpart to the `712 patent, the patent examiner rejected defendant's application on the basis of obviousness. Certified Translation of Japanese

Counterpart File History, exh. #92-10 at 98, 113-15; Certified Translation of Japanese Counterpart Prosecution Appeal, exh. #92-11, at 18-21. The Japanese patent office stated that the packet sequence number and transmit overflow sequence number described in defendant's application were analogous to the "synchronization counter" and "initial value" described in the prior art. Dkt. #92-11 at 20. In response, defendant made statements confirming that it

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designed the claimed method of the `712 patent to exclude transmission of the transmit overflow sequence number in order to increase the efficiency and security of transmission. Additionally, defendant argued that the application, which contained a claim identical to 17, should be allowed over prior art because the overflow sequence number is "never transmitted" to the receiver: Additionally, the overflow sequence number is never transmitted to the terminals in the communication path. They are neither embodied in the data packet nor derived from the data embodied in the data packet. The overflow sequence number is determined by the transmitted communication unit and the receiving communication unit. Unlike the key or the packet sequence number, there is no chance to intercept the overflow sequence number; thus, it provides a higher level of security. Dkt. #92-10 at 98 (emphasis in original); see also id. at 115 (explaining how transmitting and receiving units determine and synchronize overflow sequence number independently, "without transmitting the overflow sequence number from one terminal of the communication path to another"). On appeal, defendant argued that its application should be allowed because unlike the "initial value" in the prior art, which was "extracted from the transmitted signal," the overflow sequence is "not communicated from one end to the other end of the communication path." Dkt. #92-11 at 20-21. Defendant emphasized the difference between extracting an overflow sequence number from transmitted data, as in the prior art, and "independently determin[ing]" this number at the receiver, as in defendant's invention. Id. Defendant never abandoned this argument and the Japanese patent office ultimately allowed the claims at issue, including the claim identical to claim 17 in the `712 patent. It is well established that statements made by the inventor or patentee during continued prosecution of a related patent application may be relevant to claim construction. TIP Systems,

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LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, 1371 (Fed. Cir. 2008) ("This court has held that the prosecution history of a related patent application may inform construction of a claim term . . . ."); M icrosoft, 357 F.3d at 1349-51 (recognizing that "the prosecution history of one patent is relevant to an understanding of the scope of a common term in a second patent stemming from the same parent application"). As the court of appeals explained in M icrosoft, "[a]ny statement of the patentee in the prosecution of a related application as to the scope of the invention would be relevant to claim construction, and the relevance of the statement . . . is enhanced by the fact that it was made in an official proceeding in which the patentee had every incentive to exercise care in characterizing the scope of its invention." Id. at 1350; see also Verizon Services Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1306-07 (Fed. Cir. 2007) (court found disavowal in related patent prosecution that occurred after patent-in-suit issued); Ormco Corp. v. Align Technology, Inc., 498 F.3d 1307, 1314 (Fed. Cir. 2007) (statements made in "familial application are relevant in construing the claims at issue") (citation and quotation omitted). The Court of Appeals for the Federal Circuit has also explained that the prosecution history of a related patent before a foreign patent office should be considered when it contains relevant information. Tanabe Seiyaku Co. v. United States International Trade Commission, 109 F.3d 726, 733 (Fed. Cir. 1997) (representations to foreign patent offices should be considered "when [they] comprise relevant evidence") (quoting Caterpillar Tractor Co. v. Berco, S.P.A., 714 F.2d 1110, 1116 (Fed. Cir. 1983)). For example, in Abbott Laboratories v. Sandoz, Inc., 566 F.3d 1282, 1290 (Fed. Cir. 2009), the court of appeals found that a document

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submitted with the application of a related Japanese patent was "relevant objective evidence of the inventor's knowledge at the filing" of the United States application and was evidence that claims in the United States patent should be construed to exclude a particular embodiment. The United States application claimed priority under the Japanese application and the Japanese application had been made part of the prosecution history of the United States application. Id. See also Gillette Co. v. Energizer Holdings, Inc., 405 F.3d 1367, 1374 (Fed. Cir. 2005) (relying on construction accused infringer gave to term "comprising" in foreign proceeding relating to foreign counterpart to asserted United States patent as support for broadly construing claim); Glaxo Group Ltd. v. Ranbaxy Pharmaceuticals, Inc., 262 F.3d 1333, 1337 (Fed. Cir. 2001) (relying on statements made by applicant in foreign counterpart proceeding to construe term in United States patent); cf. Ajinomoto Co. v. Archer-Daniels-M idland Co., 228 F.3d 1338, 1349 (Fed. Cir. 2000) (using expert testimony and evidence of patentee's and infringer's own usage of term in submission to foreign government office to affirm district court's claim construction and infringement verdict; noting that "the district court's claim construction and related conclusion are supported by the testimony of the experts and fully accord with [the infringer]'s and [the patentee]'s own usages"); In re Omeprazole Patent Litigation, 2008 W L 2369864, *5 (Fed. Cir. 2008) (unpublished) (relying on patentee's statements in European counterpart to patent that talc was not source of carbonate as additional evidence to support finding of noninfringement). It is true that the court of appeals has warned that in the context of claim construction, differences in international requirements for patent prosecution could make reliance on

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representations before foreign patent offices inappropriate. AIA Engineering Ltd. v. M agotteaux International S/A,

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