UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF FLORIDA

CASE NO: 12-cv-23569-M IDDLEBROOKS

WI-LAN USA, INC. and W I-LAN,

INC.,

Plaintiffs,

TELEFONAKTIEBOLAGET LM

ERICSSON and ERICSSON lNC.,

Defendants./

ORDER GM NTING M OTION FOR SUM M ARY JUDGM ENT

THIS CAUSE comes before the Court upon a Motion for Summary Judgment (DE 2651

(ilMotion'), filed by Defendants Telefonaktiebolaget LM Ericsson and Ericsson lnc.

(collectively, çtEricsson'') on March 20, 2015. Plaintiffs Wi-LAN USA, lnc. and Wi-LAN, lnc.

(collectively, 1tW i-LAN'') tsled a Response in Opposition (DE 310j (çkResponse'') to the Motion

A il 20 2015 to which Ericsson filed a Reply (DE 291) ($%Reply'') on April 6, 201 5.l TheOn Pr , ,

Court held a hearing on the Motion on May 13, 2015. For the reasons that follow, the M otion is

granted.

1. BACKGROUND

On October 1, 2012, W i-LAN ûled a complaint alleging patent infringement against

Ericsson. gDE 11. On February 13, 2013, Ericsson moved for summary judgment, arguing that

the Patent and Conflict Resolution Agreement (:tPClkA'') limited Wi-LAN'S ability to assert the

patents at issue against Ericsson. (DE 681 . On June 20, 2013, the Court issued an Order granting

1 The sling dates of the briefs are out of order due to a sealing issue.

Ericsson's motion for summary judgment, finding that because Ericsson was entitled to and was

willing to accept a most-favored license pursuant to the PCRA, the controversy between W i-

LAN and Ericsson was moot. (DE 1 1 8 at 9).

On August 1, 2014, the United States Court of Appeals for the Federal Circuit reversed

the Court's decision. gDE 1 571. The Federal Circuit concluded that Ericsson's rights under the

most-favored licensee provision (VtMFL Provision'') were not triggered, and that the Court's

dismissal of Wi-LAN'S infringement suit was improper. (f#. at 171. Specifcally, the Federal

Circuit concluded that libased on the language of the PCRA as a whole, the M FL Provision only

applies to W i-LAN'S patents owned or controlled as of the effective date of the PCRA, which the

2 '' Wi-LAN USA Inc. v. Ericsson, lnc., 574 F. App'x 93 1 , 940. . . Florida Patentsl 1 were not. ,

(Fed. Cir. 2014). The Federal Circuit remanded the case to this Court for proeeedings consistent

with the Federal Circuit's decision.

After the case was remanded, the Court held a Markman hearing and issued a Markman

Order (DE 2091 construing terms in the $298, 6014, and 1437 Patents. ln its Motion for Summary

Judgment, Ericsson argues: (1) that the most-favored licensee provision in the PCRA compels

the dismissal of W i-LAN'S claims despite the Federal Circuit's decision; (2) non-infringement of

:298 1014 and $4373 Patents; and (3) invalidity of the :437 Patent.the , ,

A. The *298 Patent and the $014 Patent

2 The Federal Circuit collectively referred to Patent Nos. 8,027,298 ($f1298''); 8 249 014 (iv:014'');9 5and 8,229,437 (ûi:437'') (the patents at issue in this case) as the ççFlorida Patents.''3 For the $437 Patent, Ericsson moves for summary judgment on non-infringement as to indirectinfringement only.

2

The 1014 Patent is a continuation of the $298 Patent, meaning the Patents share a common

4 The specifcation describes 1ia method and apparatus forspecification but have different claims.

5 in a broadbandefficiently allocating bandwidth between base stations and (subscriber units )

wireless communication system.'' (DE 181-1, 1298 Patent at 1 :21-24). More specifically, illbqy

using a combination of techniques that allow a plurality of (subscriber units) to communicate

their bandwidth request messages to their respective base stationsl, theq . invention

advantageously makes use of the efficiency benefts associated with each technique.'' fld. at 1).

As the specification explains, the broadband wireless communication system facilitates two-way

communication between base stations and subscriber units. Lld. at 1 :62-651. Transmissions from

subscriber units to base stations are referred to as tsuplink,'' whereas transmissions from base

stations to subscriber units are referred to as Ssdownlink.'' Lld. at 1 :49-521. Because base stations

do not have unlimited bandwidth to transmit and receive data, they must allocate bandwidth

among vazious subscriber units within their coverage area. Lld. at 2:34-541.

However, the process of allocating bandwidth Sçcan become burdensome and complex,

especially . . . with regard to the allocation of uplink bandwidth.'' Lld. at 2:36-391. One reason

for this is that base stations do not possess Q&a priori information'' regarding the amount of

bandwidth subscriber units require, and therefore, must get that information from the subscriber

units. Lld. at 2:45-471. Subscriber units provide various services to their users, including voice

calling, data transmission, and video transmission. Lld. at 1 :59-621. Some services require a

4 For convenience, the Court cites to the 6298 Patent speciscation when describing the

background of the $014 and 1298 Patents.5 The Parties conirmed at the hearing held on May 13, 2015 that the tenns subscriber units (tennused in claims), customer premises equipment ($icPE9'), user equipment (i1UE'') and mobiledevices may be used interchangeably for our purposes. The Court uses the term S'subscriber

units,'' as it did in its Markman Order, for consistency.3

6 ld at 2:20-331. Therefore, base stations must alsohigher quality of service than others. ( .

prioritize bandwidth distribution based on the iktype and quality of service'' of the data to be

transmitted. Lld. at 2:20-331.

The patents explain that because base stations lack information relating to subscriber

units' bandwidth needs, subscriber units frequently initiate bandwidth modification requests. Lld.

at 2:39-46). Specifically. the subscriber units tçrequest bandwidth allocations from their

respective base stations based on the type and quality of services requested by the customers

served by the gsubscriber unitsq.'' Lld. at 2:16-191. If left uncontrolled, however, such

''bandwidth allocation requests will detrimentally affect system performance'' because the

allocation communications themselves require bandwidth. Lld. at 2:48-521.

To address this problem, the 1298 and t0 14 Patents teach bandwidth request techniques

that reduce the bandwidth consumed by bandwidth request messages. Under the 'bpolling''

technique, ç$a base station polls one or more Esubscriber units) and allocates bandwidth

specifically for the pumose of allowing the (subscriber units) to respond with k) bandwidth

requestlsl.'' (1d at 4: 1-4J. Another technique involves ltpiggybacking'' bandwidth requests on

bandwidth already allocated to a subscriber unit. Vd. at 4:21-251. Under this technique,

currently active subscriber units request bandwidth using unused portions of uplink bandwidth

already allocated to the subscriber units. ïld. at 4:26-28J. Altematively, the bandwidth requests

can be piggybacked on uplink bandwidth being used by a data service. Lld. at 4:28-301. Under

this alternative, the ligsubscriber unit) tsteals' bandwidth already allocated for a data connection

by inserting bandwidth requests in time slots previously used for data.'' Lld. at 4:30-34).

6 F m le one aspect of quality of services is priority or delay.or exa p ,

services like e-mail that can be delayed seconds without anyone noticing.

calls, on the other hand, are more sensitive to delay. (DE 207 at 6: 16-25J.4

There are low priority

Video calls and phone

Regardless of the method used to request bandwidth, the patents explain that the

subscriber unit, and iûnot the base station, is responsible for using the uplink bandwidth in a

manner that can accommodate the services provided by the gsubscriber unitl.'' Lld. at 4:34-361.

For example, the subscriber unit Skmaintains a priority list of servicess'' and those iiservices

having higher priority

priority.'' L1d at 10:51 -56J. By t'relievlingl the

. will be allocated bandwidth before those services having lower

base station of performing this task,'' less

iicommunication overhead is required, thus increasing usable system bandwidth.'' L1d at 10:62-

651. The patents state that the subscriber unit kûis in a much better position to respond to the

varying uplink bandwidth allocation needs of high quality of service data servicesy'' and therefore

iican better accommodate'' the needs of those services. Lld. at 10:66-1 1;3J.

B. The 6437 Patent

The 1437 Patent describes ûçsystems and methods of pre-allocating identifers to wireless

devices for use in requesting resources over a random access channel.'' (DE 1 8 1 -3, $437 Patent

at Abstractl. A wireless communication system includes a random access channel (i$RACH'')

over which wireless devices can anonymously send base stations requests for resources. gfJ.).

Base stations pre-allocate unique codes (a <drandom access identifier'' or 1:lkAl'') to select

wireless devices. (/:J. The wireless devices receiving such codes can subsequently transmit

them over the random access channel in their request for resources. (JJ.I. The random access

identifier allows the target base station to uniquely identify the wireless device. (Id at 10:27-

39). It may also inform the base station of the purpose of the communication (e.g., handover

from one base station to another). L1d J. Therefore, using a random access identifier during

handover helps reduce eollisions among wireless devices transmitting simultaneously, as would

occur if two wireless devices happened to randomly choose the same code at the same time. (/#.

at 5:59-621.

C. Accused Products

The Accused Products are Ericsson's LTE ifRadio Base Stations,'' which are also known

s ivevolved nodeBs'' or çteNodeBs.''a (DE 265 at 81. These base stations provide users' cellular

phones (i.e., subscriber units) with access to a carrier's LTE Network. gDE 267 Proctor Aff , Ex.

A at !! 124-28, 194-961. Among other functionss e'NodeBs receive uplink data from connected

subscriber units and forward that data to providers' networks and to the lnternet. Lld j. The

subscriber units require bandwidth to send the uplink data to the eNodeBs, Lld at ! 2291. The

two features in dispute - buffer status reports and the Scheduler - are involved in that process. A

buffer status report (f$BSR'') is a report periodically sent from the subscriber unit to the e'NodeB

that reports the amount of data presently available to be sent on the uplink. Vd. at !! 1 70-711.

The subscriber unit sends a BSR when it has no data left to send, or when it has a lot of data

ilable to send. gf#.). The Scheduler allocates bandwidth by sending an individual iiDCl''7ava

nnessage to each subscriberunit. Lld at !! 1 75-83, 229J, That message contains a1l the

needs to transmit its data, and also contains retransmissioninformation a subscriber unit

commands that the subscriber unit must follow. (.J#.).

II. LEGAL STANDARD

Sl-f'he court shall grant summary judgment if the movant shows that there is no genuine

dispute as to any material fact and the movant is entitled to judgment as a matter of law.'' Fed.

R. Civ. P. 56(a). The movant iialways bears the initial responsibility of informing the district

court of the basis for its motion, and identifying those portions of lthe pleadingss depositions,

1 D M in explains that CIDCI messages'' are a collection of separate uplink bandwidth allocationf.

messages. Min at !! 239-40.

answers to interrogatories, and admissions on file, together with the affidavits, if any,' which it

believes demonstrate the absence of a genuine issue of material fact.''

477 U.S. 317, 323 (1986) (quoting Fed. R. Civ. P. 56(c)(1)(A)).

bears the burden of proof on an issue at trial, the movant may simply çsgpoint) out to the district

court that there is an absence of evidence to support the nonmoving party's case.'' Id at 325.

After the movant has met its burden under Rule 56(c), the burden shifts to the non-

moving party to establish that there is a genuine issue of material fact. M atsushita Elec. lndus.

Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 585 (1986). Although all reasonable inferences

are to be drawn in favor of the non-moving party, Anderson v. Liberty L obby, Inc. , 477 U.S. 242,

Celotex Corp. v. Catrett,

W here the non-moving party

255 (1986), he dtmust do more than simply show that there is some metaphysical doubt as to the

material facts.'' Matsushita, 475 U.S. at 586.The non-moving party may not rest upon the mere

allegations or denials of the adverse party's pleadings, but instead must come forward with

itspecific facts showing that there is a genuine issuefor trial.'' ld. at 587 (citing Fed. R. Civ. P.

56(e)). SsWhere the record taken as a whole could not lead a rational trier of fact to find for the

non-moving party, there is no lgenuine issuv for trial.''' fJ. $:A mere çscintilla' of evidence

supporting the opposing party's position will not suffice; there must be enough of a showing that

the jury could reasonably find for that party.'' Walker v. Darby, 91 1 F.2d 1573, 1577 (1 1th Cir.

1990). If the non-moving party fails to make a sufficient showing on an essential element of his

case on which he has the burden of proof, the moving party is entitled to a judgment as a matter

of law. Celotex Corp., 477 U.S. at 323. When an alleged infringer seeks summary judgment of

noninfringement in an action for patent infringement, çsnothing more is required than the filing of

a summary judgment motion stating that the patentee had no evidence of infringement and

pointing to the specific ways in which aecused systems did not meet the claim

Exigent Tech., lnc. v. Atrana Solutions, lnck, 442 F.3d 1301, 1309 (Fed. Cir. 2006).

111. DISCUSSION

limitations-''

A. M ost-Favored Licensee Provision

Ericsson argues that the most-favored licensee provision (the CSMFL Provision'') in the

'VPClkA'') between LMEB and Wi-LAN applies toPatent and Contlict Resolution Agreement (the

the $298, $014, and 1437 Patentss and compels the dismissal of W i-LAN'S claims of

infringement. (DE 265 at 291. The MFL Provision states:

Vll. Section 1. In the event Wi-LAN t?wn.& or controls the licensing of patents notalready addressed under this Agreement and which are infringed or alleged to beinfringed by UM TS/HSPA PRODUCTS, W I-LAN hereby agrees that at any timeduring the TERM of this Agreement, at LME'S request W I-LAN will grant toLM E and its AFFILIATES a non-exclusive license to make, have made, use, sell,

offer for sale, lease or othenvise dispose of. and import LME PRODUCTSincluding UM TS/HSPA PRODUCTS and W i-LAN agrees to grant such a licenseat most-favored licensee status as compared to any future licensee of W I-LAN.

Wi-LAN USA, Inc. v. Ericsson, lnc., 574 F. App'x 931 , 934-35 (Fed. Cir. 2014) (emphasis in

original). Ericsson argues that the Federal Circuit's holding in this ease only reached the

question of which patents can trigger the MFL obligation. gDE 265 at 30-31, DE 291 at 12).

Specifically, Ericsson contends:

Ericsson's rights under the M FL Provision are triggered when two events occur.

First, as of the EFFECTIVE DATE of the PCRA, W i-LAN must have tiowngedlor controllledl'' the licensing of patents ilnot already addressed'' under theAgreement. (PCRA at Art. Vll, j1); Wi-LAN, 2014 WL 3765856 at #7. Second,those same patents must be l'infringed or alleged to be infringed'' by

':UMTS/HSPA PRODUCTS.'' (PCRA at Art. VII, jl). W i-LAN satisfied both ofthese conditions when it asserted the '759 Patent against four different companies

in 2008 and 2009.

(DE 265 at 34) (citations altered for clarity).

B Ericsson Inc. is a subsidiary of LME.8

However, the 5759 Patent is not at issue in this case, and it unclear why an unrelated

patent would trigger the M FL obligation as to the :298, $014, and 6437 Patents. The Federal

Circuit did not focus its inquiry on which patents l'trigger'' the MFL obligation, but rather,

focused on ttwhether (the MFL Provisionl applies to patents that Wi-LAN acquired after the

execution of the PClkA,'' and clearly held that it does not. See Wi-LAN USA, lnc., 574 F. App'x

at 935, 940. In explaining its decision, the Federal Circuit reasoned that l'it is clear the parties

intended the MFL Provision to only cover patents Wi-LAN owned or controlled as of the

eyective date of the #C#.1 .'' 1d. at 939 (emphasis added). Thus, the Federal Circuit held that

iithe M FL Provision only applies to W i-LAN'S patents owned or controlled as of the effective

date of the PCRA, which the . . . Florida Patents were not.''Ericsson does not contend that the

1298, t014, and 1437 Patents were owned or controlled by W i-LAN as of the effective date of the

PCRA. Indeed, it is undisputed that W i-LAN acquired the :298, û014, and $437 Patents after the

execution of the PCRA. Accordingly, the M FL Provision does not apply to those patents and

does not compel the dismissal of W i-LAN'S claims.

B. Direct Infringement of the $298 and :014 Patent:

An accused device directly infringes a patent claim if each element of the claims or its

equivalent, is present in the accused device. See, e.g. , T1P u@J., f L C Philllps (f

Brooks/Gladwin, Inc., 529 F.3d 1364, 1379 (Fed. Cir. 2008) (citations and quotations omitted).

lnfringement under the doctrine of equivalents may be established by showing that an equivalent

element performs substantially the same function in substantially the same way to produce

substantially the same result as the recited element. See, e.g., Charles Mach. lfzbrkt Inc.

Vermeer Mfg. Co., 723 F.3d 1376, 1380 (Fed. Cir. 2013). $ç(T1he doctrine of equivalents must be

applied to the claims on an element-by-element basis, so that every claimed element of the

invention - or its equivalent - is present in the accused product.'' Deere (t: Co. v. Bush Hog,

L L C', 703 F.3d 1349, 1356 (Fed. Cir. 2012) (internal quotations and citations omitted). Wi-LAN

asserts that Ericsson's LTE tiRadio Base Stationss'' also known as iseNodeBs,'' directly infringe

Claims 1 , 2, and 4 of the 1298 Patent, and Claims 1, 4, and 6 of the 1014 Patent.

Ericsson argues that W i-LAN cannot show that the eNodeBs directly infringe the :298

and $014 Patents (the 'kBandwidth Patents'') because itlalll asserted claims require that the base

stations receive fbandwidth requests' from subscriber units.'' (DE 265 at 1 0) (citing 1298 Patent,

cl. 1, 2, 4; 1014 Patent, cl. 1, 4, 6). lndeed, each asserted claim of the Bandwidth Patents requires

base stations to: (1) tsdetect a bandwidth request'' in uplink data received from a subscriber unit

and (2) lsidentify in the bandwidth request a requested amount of Iuplinkl bandwidthl.l''

See 1298 Patent, cl. 1 , 2, 4) :014 Patent, cl. 1 , 4, 6. Ericsson argues that its e'NodeBs do not

receive isbandwidth requestlsl'' from subscriber units. The Court has constnzed çlbandwidth'' to

mean tsdata transmission resources in a particular time period,'' but has not construed the term

çkrequest.'' (DE 2091.

At the sfarkman hearing, the Parties agreed that dlbandwidth'' is a data transmission

resource. This 'Vresource,'' the Parties explained, can be thought of as a highway that can carry

i$X'' number of cars, which represent data, from Point A to Point B. Counsel for W i-LAN

elaborated that 'sthat piece of highway will carry a different number of cars at 2 o'clock in the

moming than at 8:30 in the moming. . . . gDqifferent cars can go at different speeds at different

times.'' (DE 207 at 44:17-45:71. The more lanes there are on the highway (ï.e., the more

bandwidth allocated to a subscriber unit), the more cars (i.e., data) can travel on it at one time.

Therefore, when more lanes (bandwidth) are granted, more cars (data) can get to their

destinations faster.

10

Ericsson contends that $$(t)he Bandwidth Patents require the subscriber unit . . . to decide

how much bandwidth it desires, request that amount, and the base station then grants bandwidth

based on its ability to meet that request.'' (DE 265 at 12) (citing :291 Patent, c1. 1, 2, 4; $014

Patent, cl. 1, 4, 6) (emphasis added); see also (DE 268-8, Stanwood Dep. at !! 133:18-143: 141.

Ericsson's eNodeB (base station), however, decides how much, if any, bandwidth to allocate to a

subscriber unit, based in part on a report the subscriber unit sends it (the iûBSR''). gDE 268-1 1,

Min Dep. at 124:10-130:15; DE 267-2, Proctor Suppl. at !! 61, 64). The BSR contains only two

9 d (2) anpieces of infonnation: (1) an identitscation number for a logical channel group ; an

integer that approximates the bytes of data available for uplink transmission. (DE 265 at 10-1 1 ;

DE 268-1 1, Min Dep. at 95:8-13, 101 :13-20s 1 14:5-1 16:12; DE 267-2. Proctor Suppl. at ! 50;

DE 267 Proctor Aff., Ex. A at ! 1701. ln other words, the BSR merely reports an approximation

of how much data is available for transmission on the uplink. (/JJ. Therefore, Ericsson argues,

the BSR does not constitute a lsrequest.'' Further, the BSR does not request ilbandwidth'' - or

étdata transmission resources in a particular time period.'' Specifically, the BSR does not request

the resource on which the data is to be transmitted (Le. s a number of highway lanes), but rather

reports an approximation of how much data (i.e., a number of cars) is available to be transmitted

on the uplink. Accordingly, Ericsson argues, the subscriber units do not make llbandwidth

requests.''

W i-LAN counters that subscriber units do make t%bandwidth requests'' through BSRS.

W i-LAN reasons that:

Ericsson's view of the claims is backwards - the claims of the 298 and 014

Patents are written from the point of view of the base station. E.g. , 298 Patent at

9 A logical channel group is simply a number used to group logical chazmels. Logical channels

cany data from the subscriber units to the e'NodeB.1 1

23: 10 (tiA base station for communication . . .''). lt is how a base stationinterprets a message that makes the message a request for bandwidth.

(DE 310 at 7). Wi-LAN elaborates that çdthe Ericsson base stations are able to identify from the

iber units) exactly how many physical resource blocks (PRBs)(10j theBSRS sent by (subscr

(subscriber unitl needs at a given point in time.'' gDE 310 at 71. W i-LAN contends that Stwhen

the base station receives a BSR, that BSR does more than merely report data in bytes - in the

f the TTIII 1q and the modulation scheme, it gets translated into a number of requestedcontext o

resource blocks, which themselves are bandwidth, because they are units of data transmission

resourees in a particular time.''Lld. at 81 (emphasis in original).

However, the evidence W i-LAN cites does not support its contention that the data tigets

translated'' into PlkBs. Instead, it merely indieates that the number of bytes of data reported in a

BSR is afactor e'NodeBs use in calculating the number of PRBS to allocate to subscriber units,

See (DE 310 at 7) (quoting Dr. Min's expert opinion that iiltjhe LTE e'NodeB decides how much

uplink bandwidth a (subscriber unit) receives based upon a vlrfpl.y offactors, including channel

conditions and some understanding of how much data is awaiting transmission.'') (emphasis

altered). A11 of the asserted claims require that Ericsson's eNodeBs ûtidentify in'' the t'bandwidth

request'' 1%a requested amount of bandwidthl.l'' See 6291 Patent, cl. 1, 2, 4; 1014 Patent, c1. 1, 4,

The eNodeBs, however, use the bytes of data reported in the BSR, along with other information,

to calculate an amount of bandwidth to allocate. In other words, there is no ikrequested amount

of bandwidth'' in the BSR for an e'NodeB to ûkidentify.'' See id.

10 h frequencies over which data travels (ûtdata transmission resources'') as defined inPRBS are t eunits of time (Véin a particular time period'') - i.e., kibandwidth.''1 l tiTTl'' refers to a çi-rransmission Time lnterval.'' Dr. M in explains that the eNodeBs processBSRS in a context in which both the eNodeBs and the subscriber units know that Sfthe basic

interval of bandwidth allocation'' is a TTI of 1 millisecond. Min Supp. Rep. ! 38; Min Rep. !

1 331.

Further, at the Markman hearing, W i-LAN conceded that libandwidth'' must mean the

same thing when it comes to 'irequesting'' and iiallocating.'' Specifically, counsel for W i-LAN

argued: $t(Y)ou have to know what is being allocated and requested . . . . And it has to mean the

same thing in both places. . , . (Y)ou can't construe it one way for allocation and one way for

request. lt has to be consistent.'' (DE 292-2; Markman Hearing Tr. 122: 1 -221. Accordingly, by

W i-LAN'S own reasoning, if the ikbandwidth'' allocated to a subscriber unit is a number of

PRBS, then the ççbandwidth'' requested by the subscriber unit must also be a number of PRBS.

The BSR, however, does not contain a number of PllBs. As W i-LAN'S expert admits, carriers

today would not even allow a system in which the subscriber units requested a number of PRBS

from an eNodeB, rather than reporting an approximation of the data available for uplink

12 Thus in the tibandwidth request'' identised by W i-LAN, subscriber units merelytransmission. ,

report the number of bytes of data available for uplink transmission to the e'NodeB. They do not

request a number of PRBS - i.e. , ûçbandwidth.''

Finally, a report periodically sent from a subscriber unit to an eNodeB reporting the

amount of data presently available to be sent on the uplink does not constitute a 'trequest.''

Despite Wi-LAN'S contentions, itrwlithout an expressintent to impart a novel meaning to a

claim term, the tenn takes on its ordinary meaning.'' CCS Fitness, Inc. v. Brunswick Corp. , 288

F.3d 1359, 1368 (Fed. Cir. 2002) (quoting Kegel Co. v. AMF Bowlîng, Inc., 127 F.3d 1420, 1427

(Fed. Cir. 1997)). Accordingly, the claim term t'bandwidth request'' takes on its ordinary

meaning - a 'trequest for bandwidth.''As explained above, a BSR (literally, a 'lBuffer Status

12 W i-LAN'S expert elaborated: 'il don't think it would be something that the carriers would

allow because it is the base station who controls the resourees. And . . . for (subscriber unitsl torequest a resource block without . . . sajing why it needs it, that - that would be against sort oflike philosophical things that goes on ln wireless communication.'' (DE 268-1 1, Min Dep. at127: 14-24J. Dr. Min further opines that that would Ssclearly'' be a 'tless efficient'' system. L1d at

128:9-251.13

Report'') does not make a request for bandwidth, but rather reports an approximation of how

much data is currently available for transmission on the uplink. A LTE subscriber unit will

sometimes send a BSR even when it has no data awaiting transmission in its uplink-transmission

buffers. ln other words, LTE subscriber units send BSRS to e'NodeBs even when they have no

need for bandwidth. (DE 267 Proctor Aff., Ex. A at ! 2081. Thus, W i-LAN has failed to

lneos USA L LC, 783 F.3d atidentify a genuine issue of material fact as to direct infringement.

869; (DE 310 at 5-162.

ln sum, the BSRS sent from subscriber units to e'NodeBs not only fail to make requests,

but further fail to make requests for bandwidth. Because subscriber units do not send

ltbandwidth requests'' to eNodeBs, eNodeBs cannot

requested amount of (uplink) bandwidth.''

é'identify in the bandwidth request a

Therefore, Ericsson's eNodeBs do not directly

1 3 sor through the doctrine of equivalents. eeinfringe the Bandwidth Patents, either literally

Charles Mach. Works, Inc. Vermeer Mfg.

(infringement under the doctrine of equivalents requires that a çisubstitute element (1) has

substantially the same function as the recited element, (2) achieves that function in substantially

the same way, and (3) achieves substantially the same result.''). Because there is no direct

Co.. 723 F.3d 1376, 1380 (Fed. Cir. 2013)

infringement, the Court need not address Ericsson's indirect infringement arguments as to the

Bandwidth Patents. See Dynacore Holdings Corp. v. US. Philips Corp. , 363 F.3d 1263, 1272

(Fed. Cir. 2004) (tilndirect infringement, whether inducement to infringe or contributory

infringement, can only arise in the presence of direct infringement.'').

C. Validity of the :437 Patent

13 Ericsson's Motion to Strike Certain Paragraphs of the Supplemental Expert Report of Paul S.

Min (DE 269) as untimely and prejudicial is denied, given that Wi-LAN'S alleged failure tocomply with Rule 26(e) is harmless. See Fed. R. Civ. P. 37(c)(1).

14

35 U.S.C. j102(b) provides that a person is not entitled to a patent if the claimed

invention was described in a printed publication more than one year prior to the patent's

application date. $$To anticipate a patent claim under 35 U.S.C. j 102, la gprior artl reference

must describe . . . each and every claim limitation and enable one of skill in the art to practice an

embodiment of the claimed invention without undue experimentation.''' Ineos USA LLC v,

Berry Plastics Corp., 783 F.3d 865, 868 (Fed. Cir. 201 5) (quoting Am. Calcar, Inc. v. Am.

Honda Motor Co., 651 F.3d 1318, 1341 (Fed. Cir. 201 1(9. A prior art reference still may

anticipate a claim without disclosing an element of that claim if the element is éinecessarily

present'' in the anticipating reference. See Schering Corp. v. Geneva Pharmaceuticals, Inc. , 339

F.3d 1373, 1377-79 (Fed. Cir. 2003). Anticipation is a question of fact but may be resolved on

summary judgment if there is no genuine issue of material fact. lneos USA LLC, 783 F.3d at

869; Zenith Electronics Corp. v. PDI Comm. Sy5,., Inc., 522 F.3d 1348, 1356-57 (Fed. Cir. 2008).

Ericsson argues that the 1437 Patent is anticipated by a 1992 book entitled, St-f'he GSM

System for M obile Communications,'' written by M ichel Mouly and Marie-Bernadette Pautet

(i$Mou1y''). (DE 265 at 221. Specifically, Ericsson contends;

Mouly describes a handover grocess where a target base station (BSS-new)allocates a random access identlfier that uniquely identifies a mobile device (thehandover reference), transmits that random access identifier to the serving basestation (BSS-o1d), and that serving base station transmits the random accessidentifier to the mobile device. The mobile device then sends the random accessidentifier over a RACH to the target base station, which the target base station

uses to send a timing adjustment to the mobile device for synchronizing themobile device to the target base station IRIL3-ltR Physical Infonnation message).These steps satisfy every limitation of asserted claims 8 and 18 of the :437 Patent.

gDE 265 at 244.

W i-LAN counters that Ericsson has failed to meet its burden of proving invalidity for the

following four reasons: (1) the handover reference disclosed in Mouly is not sent over a random

15

access chmmel; (2) the handover reference disclosed in Mouly is not ikpre-allocated'' because it is

not set aside by the base station prior to the execution of the handover; (3) each mobile station

performing handover in the M ouly reference is not assigned a tdunique'' handover reference; and

(4) Mouly does not disclose a feedback message based on receipt of the RAI because the timing

adjustment sent by the base station is autonomous. (DE 31 0 at 25-301.

1. Is the Handover Referenee Disclosed in M ouly Sent Over a RACH?

The asserted claims require that the mobile device send the random access identifier

($$RAI'') to the target base station çsover a random access chalmel'' (û$RACH'') during handover.

See $437 Patent at c1. 8, 1 8. A 'kchannel'' can be thought of as an over-the-air highway on which

data travels. As explained in the $437 Patent, when a eonnection between a base station and a

mobile device has been fully established, the base station gives the mobile device resources on a

lsdedicated channel,'' which is dedicated to that device for a period of time. 1d. at 17:60-67.

Prior to eonnection, however, initial efforts to set up a link between a device and base station

occur over a common RACH, on which mobile devices can communicate with a base station

anonymously. 1d. at 1:35-40. l'The base station receiving and processing the anonymous

requests reduces the probability of random access channel collisions and conserves the resources

needed to support the anonymous requests by pre-allocating one or more codes to select wireless

devices.'' 1d. at 1 :38-42, The wireless devices with the pre-allocated codes can transmit their

code kiover the random access channel as a request for resources that uniquely identities the

requester.'' Id. at 1 :42-45,

Ericsson argues that the RIL3-RR HANDOVER COM M AND message disclosed in

'çhandover reference,''l4 which is initially sent fromM ouly contains a unique eight digit code, or

the target base station ('çBTS-new'') to the source base station (ttBTS-old''). (DE 339, May 13,

2015 Hearing at 10-1 1J; see aI.%o Mouly at 410 (the Ss8-bit handover reference . . . . is part of the

data transmitted to the mobile stationglsl in the RIL3-RR HANDOVER COMMAND message

and can be used by B'Fs-new as an additional check that the accessing mobile station is indeed

the expected one.''). Next, BTS-oId sends the handover reference to the mobile device. After

that, Ericsson contends that the mobile device sends the handover reference on the RACH via

ikaccess bursts'' to communicate with B'Fs-new. (DE 265 at 23, 25J (citing Mouly at 410).

Ericsson further contends thatMouly makes clear these access bursts are sent over a

RACH. gDE 265 at 25J.Mouly explains that an iûaccess bursf';

is only used in the uplink direction during initial phases when the propagationdelay between the mobile station and the base station is not yet known. This is

the case with the first access of a mobile station on the RACH, or sometimes with

the access of a mobile station to a new cell upon handover. The access burst is ashort burst; it is the only kind of burst used on the RACH.

Mouly at 232.

Ericsson also distinguishes between asynchronous and synchronous handovers.

Speciscally, Eriesson argues thatalthough Mouly disclosesthat synchronous handovers take

place over a dedicated channel,the $437 Patent deals with asynchronous handovers, which

necessarily (and as disclosed in Mouly) take place over a RACH.(DE 265 at 251. As Mouly

explains, there are two types of handovers: synchronous and asynchronous. M ouly at 397. In a

synchronous handover, tsthe mobile station is able to compute the new timing advance (to be

14 i tends that the i'handover reference'' described in Mouly is equivalent to the i'pre-Er csson con

allocated code'' or ivrandom access identitser'' ('1RAI'') described in the 1437 Patent. See (DE 265

at 1%; May 1 3, 2015 Hearing at 10.15 A vsmobile station'' is equivalent to a ikmobile device'' or cell phone.

1 7

applied with BTS-new),'' because

timing is never lost.

initialised both at the mobile station and at B'rs-new during the handover procedure,'' because

the mobile device and B'rs-new are not yet in synch. Id

the mobile device is always in synch with B'rs-new and

1d. In an asynchronous handover, however, ççthe timing advance must be

Ericsson argues that this timing adjustment affects whether the handover reference can be

sent on a dedicated channel or must be sent on a RACH. Specifically, Ericsson contends that in

synchronous handover, a handover reference can be sent on a dedicated channel because there is

no need for a timing adjustment, whereas in asynchronous handover, the handover reference

must be sent on a RACH because there is a need for a timing adjustment. (DE 265 at 251. This

is because B'rs-new cannot set up a dedicated channel until the mobile station and B'rs-new are

in synch - i.e. , after the timing adjustment has occurred. Lld. 1 (citing Mouly at 349). At the May

13, 2015 hearing, counsel for Ericsson elaborated that B'rs-new carmot set up a dedicated

channel with a mobile station before the mobile station and B'rs-new are synchronized because

it is not until then that B'rs-new possesses enough information (i.e.. where the phone is located,

channel conditions, etc.) to set up a dedicated channel. gDE 339, May 13, 2015 Hearing at 20-

211. Ericsson's expert Mark Lanning explains the process outlined in Mouly as follows:

In the initial access of the mobile station to the target base station in anasynchronous handovers the propagation delay between the mobile station and the

base station is not known. In order to receive the correct timing advance (TA)from the target base station, the mobile station transmits at least one access burst,

which contains the allocated random access identifer, over the random access

channel (RACH) to the target base station.

gDE 266-1, Lanning at ! 3724; see also Mouly at 232 (6i(TJhe access burst is only used . . . during

initial phases when the propagation delay between the mobile base station and the base station is

not yet known. This is the case with the first access of a mobile station on the RACH, or

sometimes with the access of a mobile station to a new cell upon handover.''); Mouly at 410 (çilf

1 8

the handover is an asynclaronous one (J, the mobile station continues to send access bursts until it

has received an RIL3-RR PHYSICAL m FORM ATION message from B'rs-new, conveying the

actual timing advance to app1y.''); Mouly at 349 (A Slmobile station is forbidden to transmit

normal bursts until it knows the new timing advance to apply. . . . This exchange lengthens the

duration of the handover procedure between asynchronous cells compared to the synclaronous

case described earlier-'l.

Finally, Ericsson argues that 4dto the extent that M ouly does not explicitly disclose that

the random access identifier (i.e., the handover reference) is sent over a RACH, this element is

inherently present.'' gDE 265 at 261. Inherency allows a court to analyze lçother sources of

evidence about the meaning of the prior a1't.'' Schering Corp. v. Geneva Pharms., Inc., 339 F.3d

12373, 1378 (Fed. Cir. 2003)) see also Continental Can Co.USA, lnc. v. Monsanto Ct)., 948 F.2d

1264, 1269 (Fed. Cir. 1991) (inherency is meant to Sçaccommodate situations where the common

knowledge of technologists is not recorded'' in the prior art reference, and tisuch gap in the

reference may be filled with recourse to extrinsic evidence.''). Specifically, Ericsson argues iilals

Dr. Min admits and M r. Lanning confirms, a person of skill in the art reading M ouly would have

16 i tunderstood that, in an asynchronous handover situation, the handover access messagel 1 s sen

from the mobile device to the target base station over the RACH.'' (DE 265 at 261 (citing

Lanning !! 361, 367-70; Lanning App. 3 at 9-1 1 ; Min Dep. at 253:1 1-17,. 255..6-16., 257:7-

258:10). Ericsson further notes that others skilled in the art have intemreted Mouly in the same

way. (f#.1 (citing Baron Exh. 4, U.S. 7,945,263 at 7:41-66 (priority date Nov. 29, 2005)

16 ding to M ouly, the handover access message t'only contains an 8-bit handoverAccor

reference.'' Mouly at 41 0. Lanning explains that ikthe mobile station extracts the 8-bit handover

reference (from the HANDOVER COMMAND message) and uses this number in an laccessburst' that is sent to (BTS-new) over the EBTS-new's1 random access channel (ItACH).''

Lanning at ! 361 .

(describing that during handover, SSMS 102 (mobile stationl will send an çaccess burst' to BTS

106-2 (base transceiver station) on a RACH channel to initiate the radio link'' and that 1ta more

detailed description of the various handover procedures can be found in S'T'he GSM System for

Mobile Communications' by Michel Mouly and Marie-Bernadette Pautet'') (emphasis added);

Baron Exh. 5, U.S. 6,138,020 at 4:51-65 (priority date Sept. 26, 1997) (describing that, in

asynchronous handover, iithe M obile Station is required to send laccess' bursts with a null timing

advance'' to the target base station, and iililn GSM, these iaccess' bursts are sent on the

Random Access Channel (çRACH')'') (emphasis added by Ericsson).

W i-LAN counters that Ericsson draws a false distinction between synchronous and

asynchronous handover, which both lsrequire synchronizing via a timing advance'' in Mouly.

gDE 310 at 261. For support, Wi-LAN points to an excerpt from Mouly, which states ilthe

mobile station is able to compute the new timing advance (to be applied with BTS-new), because

the old and new cells are synchronized (synchronous handoverl.'' Mouly at 397. lmmediately

below that excerpt, however, Mouly explains that in asynchronous handover, Ssthe timing

advance must be initialised both at the mobile station and at BTs-new during the handover

procedure (asynchronous handoverl.'' 1d. (emphasis added). This is a key distinction, which

supports Ericsson's contention that in asynchronous handover, the mobile station cannot

compute the new timing advance (to be applied with BTS-new) on its own, but rather must

transmit access bursts containing the handover reference over the RACH to B'rs-new in order to

receive the correct timing advance from B'rs-new. gDE 266-1, Lanning at ! 372)

W i-LAN also argues that Mouly teaches sending the handover reference on a dedicated

channel, rather than on a random access channel, regardless of whether the handover is

synchronous or asynchronous. Lld. at 251. To support this contention, Wi-LAN cites to a

20

passage in Mouly, which states: iiln both cases (synchronous and asynchronous handover), the

RIL3-RR HANDOVER ACCESS message only contains an 8-bit handover reference. This

message is the only case where short access bursts are used on a dedicated channel.'' (ftfl

17Mouly at 4101 (emphasis added by W i-LAN).

W hile the record supports the statement thatthe RIL3-RR HANDOVER ACCESS

message %kis the only case where short access bursts are used on a dedicated channel'' in a

synchronous handover, see M ouly at 349, 397, the record does not support that this is also true

with asynchronous handovers.

be read to include asynchronous handovers, such a reading is inconsistent with the rest of M ouly

Although when read in isolation, this two-sentence excemt could

W i-LAN also attempts to supportby citing to a passage in Mouly at 232. which reads: kil-l-jhe access burst is only used . . . duringinitial phases when the propagation delay between the mobile base station and the base station isnot yet known. This is the case with the first access of a mobile station on the RACH, or

sometimes with the access of a mobile station to a new cell upon handover.'' (DE 310 at 25)(quoting Mouly at 232) (emphasis added by Wi-LAN). Wi-LAN contends %dgtjhis shows thataccess bursts can be sent on the RACH not during handoven'' Lld ). However, this passageappears to support Ericsson's position that access bursts containing a handover reference areused on the RACH when the propagation delay between the mobile base station and the base

station is not yet known (i.e. , during asynchronous handover) because B'rs-new lacks thephysical information required to set up a dedicated channel, See Mouly at 232.

17 that the handoverreference is sent over a dedicated channel

Wi-LAN further contends çtMouly's explanation that during asynchronous handoverg, mobilestationsl lcontinue to send access bursts until it has received an RIL3-RR PHYSICALINFORMATION message from the B'rs-new' further shows that the dedicated channel is usedboth before and after synchronization because Mouly does not disclose switching from one

channel to () another.'' rJ'ffl (quoting Mouly at 410). Again, however, the passage Wi-LANquotes supports Ericsson's position that asynchronous communications must take place on the

RACH until the mobile station receives tça RlL3-RR PHYSICAL INFORM ATION messagefrom B'rs-new, conveying the actual timing advance to apply,'' Mouly at 410, given that a

timing adjustment is required for synchronization, which in turn, is required for communicationon a dedicated channel. As counsel for Ericsson explained during the M ay 13, 201 5 hearing,

B'rs-new cannot set up a dedicated channel until synchronization has occurred because it is not

until then that B-rs-new knows how far away the phone is, how it is moving, and other physical

information required to set up a dedicated channel.

, i,yy () r,),.1 8(totaling 695 pages) and inconsistent with both Parties expert test

Lanning at 137-1411; Min Dep. at 254-258; Mouly at 232, 349, 397, 410.

6.37 (located directly above the passage Wi-LAN relies onl and its accompanying description

demonstrate that in the case of an asynchronous handover, the HANDOVER COMPLETE

message (which is sent ajter the HANDOVER ACCESS message, containing the handover

See, e.g. , (DE 266-1 ,

For example, Figure

reference, and the PHYSICAL INFORMATION message, containing the timing adjustment) is

the first communication sent %'on the new dedicated channel.'' It follows that the HANDOVER

ACCESS message is sent on a RACH.

'8 Although Dr. Min states in his Validity Report that ViM ouly does not disclose receiving the

random access identifer over a random access charmel,'' Dr. M in agreed at his deposition that in

an asynchronous handover, the access burst is sent over the RACH. See Min Valid. Rep. at !257; Min Dep. at 253:1 1-22, 254:5-255: l 6, 257:7-258:10.). Dr. Min further admitted that thelanguage upon which Wi-LAN relies (;'This message is the only case where short access burstsare used on a dedicated channel'') means only that :syou obtain the synchronization first and thenyou use it on a dedicated channel.'' ld at 257:7-258:4. Finally, Dr. M in agreed that an accessburst can only be on a dedicated channel after B'Ts-new and the mobile device have been

synchronized. 1é at 258:5-10.

MS BTFnew Bsc-new Msc-new anchor MSC

' ' - ' '. ' ' ''' 'O : $ : . '' c-.:z- :. ,. ' -4 - .

7x. ..er . .. j . '. . ' . . . .,.j ..e-. j j , . , j 1, ! -j @ ''' î . . -,. . w , . . . . ;. ...- ' . . u ... . .1 .

x 'r ' '( sà: ! , .-1:,z,-. . , Msc vts Msc vtR

sAtoovsal Accc-ss wsoojo n' (s

j zryEc'rloN) tyjAjjnovEn1 oFTscp

i PHYSICAL( INFORMATION)1

SABM

UA

HANDOVEB SEND ENDANX VQB CQMPLEI'E COVPEW EH SIGNAU

Figtl t.e 6-37 - Access itk llte case of a,1 asynt*hl'oflotls Ilandover

O)11y fo) lowillg refeption of !ltI ,!-kR pI1YsI(.>AI . INCARMATION mtl%age:does tbe mobil: sralilm swi rch lo normal u-aflsmission n'Iolk

whtb the hlning advn. ncc lls indtcatell.and sends an ItlL3-eR 1 i'ANDOVER C0511:1 .fJ.TE' Inttgsage after llavirlg

cstabtishcd 1hc SAPI 0 signatling link on tht new dcdicatcd channol-

M ouly at 410.

Moreover, even W i-LAN'S expert, Dr. M in admits that the language upon which W i-

LAN relies means only that in the case of asynchronous handover, tiyou obtain the

synchronization first and then you use it on a dedicated channel.'' M in Dep. at 257:7-258:4. Dr.

Min admits that M ouly discloses that all access bursts must be sent over a RACH until the base

station and mobile device are synchronized. Id at 254:5-255:16) 258:5-10, Dr. M in further

admits that there is a significant distinction between synchronous and asynchronous handovers

with respect to the ability to communicate with B'rs-new on a dedicated charmel. See M in Dep.

at 257:23-258:4 ($iSo if it's for the synchzonous handover then it's easier, clearly, you know, you

haven't lost your synchronization.

first and then you can use it on a dedicated chnnnel.').

But if it's asynchronous, then you obtain the synchronization

Accordingly, W i-LAN has failed to identify a genuine issue of material fact as to whether

the handover reference disclosed in M ouly is sent over a RACH.Ineos USA LL C, 783 F.3d at

869; (DE 310 at 25-281.

2. Is the Handover Reference Disclosed in M ouly Pre-Allocated?

The Court has construed ilrandom access identifier'' as a Gipre-allocated code for use on a

random access channel.'' (DE 209 at 261 (emphasis added).A handover reference, as described

in Mouly, is an 8-bit number or code. Mouly at 410; (DE 266-1, Lanning at !! 360-611. A bit

consists of either a 0 or a 1. Mouly at 231 .Thus, there are 2A8, or 256, possible combinations of

os and 1s. (DE 265 at 281, When the target station (BTS-new) is notitsed that a mobile station

requires handover to it, B'rs-new generates and allocates a handover reference, which B'Ts-new

sends to the mobile station via BTS-old over the existing connection. Mouly at 410; gDE 266-1,

Lanning at !! 360-63).Specifically, the handover reference is sent to the mobile station in the

RIL3-RR HANDOVER COMM AND message. ld. The mobile station sends the handover

reference back to B'rs-new in the form of an access burst over the RACH. Id Ericsson argues

that these handover references are tçpre-allocated'' because they ûkare already known and set aside

before the serving base station (BTS-o1d) begins the handover process . . . . The target base

station gBTS-new) chooses from among them to serve as a handover reference for a particular

device.'' (DE 265 at 281 (citing Mouly at 404, 410; Lanning at !! 362-63; Lanning App. 3 at 7-

8).

W i-LAN counters that the handover reference disclosed in M ouly is not pre-allocated

because:

As conceded by Ericsson, M ouly only teaches that after the serving base station

initiates the handover, the target base station generates a handover reference,builds the RlL3-RR HANDOVER COM MAND message including this handover

reference and conveys it to the mobile station. M ouly at 399-400, 403-04; Br. at24. Nowhere does M ouly disclose that the handover reference codes are set aside

prior to execution of handover only for handover purposesg.l . . . Min Valid. Rep.! 255; DE 209 at 22; CSF ! 66.

(DE 310 at 291.

Both parties agree that

provided to a mobile station via the RIL3-RR HANDOVER COMM AND message before the

mobile station uses the handover reference to communicate with B'rs-new (on a RACH).

Although W i-LAN argues that Mouly fails to disclose that the handover reference is set aside

before BTS-old contacts B'Fs-new to initiate handover. neither the Court's construction of

tçrandom access identifier,'' nor the claims containing 'trandom access identitler,'' require that. ln

the handover reference disclosed in Mouly is generated and

fact, W i-LAN'S expert Dr. M in opined that the preamble sequence in the accused LTE system is

pre-allocated because 'tthe base station transmits the assignment of a CFRA preamble (the

alleged RAIJ to the UE gmobile station) that uniquely identifes the UE before the UE sends the

CFRA preamble sequence back to the base station over the random access channel for

handover.'' Min Suppl. ! 148 (emphasis in original); Min Dep. at 228:8-1 1. In other words, the

codes in M ouly are llpre-allocated'' in the same way Dr. M in contends they are ikpre-allocated'' in

the accused product. As Ericsson notes, tsltlhat which infringes, if later, would anticipate if

earlier.'' Peter v. Active Mfg., 129 U.S. 530, 537 (1889).

Accordingly, W i-LAN has failed to identify a genuine issue of material fact as to whether

the handover reference disclosed in Mouly is tipre-allocated.'' (DE 310 at 28-291.

3. Does the Handover Reference Disclosed in M ouly Uniquely Identify Each M obile Station

Perform ing H andover?

The 1437 Patent requires that a target base station (BTS-new)allocate a ltAI that

iiuniquely identitlies) a mobile station in coverage area of the target base station in association

with a handoverl.l'' See 1437 Patent at c1. 8, 18. The Court has not constnzed the phrase

'tuniquely identifies/identifyingr'' and the Parties do not suggest that the claim tel'm should depart

from its ordinary meaning. Accordingly, ûtuniquely identifies/identifying'' takes on its ordinary

meaning. CCS Fitness, Inc. , 288 F.3d at 1368. Skunique'' can be defined as ûtlimited in

''19 hile tiidentify'' means 'lto establish or indicateoccurrence to a given, class, situation, or area, w

'520 Thus ftuniquely identifies,'' for our pum oses, means that the lkAlwho or what something is. ,

(handover reference) must allow the target base station (BTS-new) to distinguish between mobile

devices attempting handover over a IIACH within the target base station's coverage area at a

given time.

W i-LAN argues that liM ouly does not disclose that each mobile station performing

handover is assigned a unique handover reference.'' gDE 310 at 29). Ericsson counters that isit is

nonsensical to argue that the base station would assign two mobile stations the same handover

reference when the handover reference is to be 'used by B'rs-new as an additional check that the

accessing mobile station is indeed the expected one.''' gDE 291 at 1 lj (quoting Mouly at 410).

M ouly does disclose using a handover reference as a dscheck'' to ensure that the accessing

mobile station is indeed the expected one. See M ouly at 410. As explained supra, a handover

reference is an 8-bit code comprised of 0s and 1s.Mouly at 231, 410; (DE 266-1, Lanning at !!

19 The Random House Dictionary of the English Language 2074 (2d ed. 1987).20 oxfbrd Dictionaries,http://- .oxforddictionaries.coe us/desnitioia ericr - engliskidentià (last visited May 20,

2015).

360-611. Thus, there are 2A8. or 256, possible combinations of these 0s and 1s.

While the Court recognizes the possibility that more than 256 mobile devices might wish to

communicate with B'rs-new on the RACH, counsel for Ericsson explains that a handover

reference ttis unique because it will be assigned only to that phone until the handover process is

(DE 265 at 281.

complete,'' and then iiit will go back in the kitty, as it were, and be used for another. . . .'' (DE

339, May 13, 2015 Hearing at 251; see also Mouly at Ch. 6.

M ouly further explains that base stations have limited resources available for mobile

station access. See Mouly at 404-09. Speciscally, Mouly states that 'tgtqhe main obstacle (to

seamless handover) is the non-availability of radio or terrestrial resources.'' Id. at 408.

Sometimes a B-l-s-new lacks sufficient resources to send a HANDOVER COM MAND message

containing a handover reference to a mobile station via BTS-o1d. Id. In those cases, iian

unsuccessful indication is sent back from BSC-new.'' f#. Subsequently, k'gelither a new

handover attempt towards the same cell is performed after some time, or a handover towards

another cell is attempted.'' As a result, not every mobile device that may desire to

communicate with B'rs-new on the RACH through a random access burst receives a

HANDOVER COM M AND message from B'rs-new via BTS-o1d, which would enable it to do

SO.

ln sum, B'rs-new can only allocate handover references to a finite number of mobile

stations because of its limited resources, and only assigns a particular handover reference to a

particular mobile station until that mobile device completes handover. M oreover, the very brief

time period over which handover occurs further limits the num ber of m obile stations a base

station is tasked with identifying at a particular time. Given that the primary pumose of a

handover reference is to ensure that the accessing mobile station is indeed the expected one, see

Mouly at 373, 410, Ericsson has met its burden of showing that the handover reference iiuniquely

identifies'' the mobile station. See also (DE 266-1 Lanning at ! 364-65 (opining that the

handover reference disclosed in Mouly tiuniquely identifies'' the mobile station in coverage area

of the target base stationll; Min Rebuttal at ! 249-60 (Min does not contest that the handover

reference uniquely identifies the mobile station to BTS-new). Thus, W i-LAN has failed to

identify a factual dispute as to whether the handover referenee disclosed in M ouly uniquely

identifies each mobile station.

4. Does M ouly Disclose a Feedback M essage Based on the Receipt of the Random Access

ldentifier?

Finally, claims 8 and 18 in the 1437 Patent require that $:a feedback message comprising a

timing adjustment'' is generated Sfbased on the reception of a random access identifier.'' 1437

Patent at cl. 8. 18. W i-LAN contends that SéEricsson cites nothing in M ouly to show a timing

advance generated based on a handover reference, and Mr. Larming does not assert it.'' (DE 310

at 30j. However, Ericsson explains that Mouly discloses that ttthe target base station sends a

tphysical information' message to the mobile station containing a timing advance upon receipt of

the lhandover access' message containing the handover reference.'' (DE 291 at 1 1J. Further,

Mr. Lanning does assert this. See Lanning Decl. Exh. A, Lanning Rep. !! 371-72. Finally, Dr.

Min agrees that Mouly çidiscloses that a timing advance is sent by the BTS based on the receipt

of access bursts.'' Baron Decl. Exh. 3, Min Val. Rep, ! 259. Because access bursts contain the

handover reference (or 1kAI), Dr. Min implicitly admits that Mouly discloses this limitation.

Thus, W i-LAN has not identified a factual issue as to whether Mouly discloses iia feedback

message comprising a timing adjustment'' that is generated ççbased on the reception of a random

access identifier.''

28

Because every limitation of claims 8 and 18 of the 1437 Patent are disclosed in M ouly,

21Apple Computer, lnc. , 234 F.3d at 20, those claims are invalid as anticipated.

lV. CONCLUSION

For the reasons stated above, the Court finds that the most-favored licensee provision in

the Patent and Conflict Resolution Agreement between LM E and W i-LAN does not apply to the

1298, i014, and 1437 Patents. The Court further finds that the Accused Products do not directly

infringe the :298 and 1014 Patents, and that claims 8 and 18 of the $437 Patent are invalid as

anticipated. Thus, the Court need not address W i-LAN'S claims as to indirect infringement.

Accordingly, it is hereby

ORDERED AND ADJUDGED that Ericsson's Motionfor Summary Judgment gDE

265) is GRANTED.Ericsson's Motion to Strike Certain Paragraphs of the Supplemental Expert

Report of Paul S. Min (DE 2691 is DENIED.

SO ORDERED in Chambers in West Palm Beach, Florida, this M day of May, 201 5.

D ALD M .MIDDLEBROOKSUNITED STATESDISTRICT JUDGE

Copies to: Counsel of Record

2' B the Court finds that claims 8 and 18 of the 1437 Patent are invalid as anticipated, itecause

declines to address Ericsson's arguments as to indirect infringement of those claims.

29