Eon Corp. IP Holdings, LLC v. Sensus USA Inc. (741 F. Supp. 2d 783, 2010)

MEMORANDUM OPINION & ORDER

JOHN D. LOVE, United States Magistrate Judge.

This claim construction opinion construes the disputed terms in U.S. Patent Nos. 5,388,101 (“the '101 Patent”) and 5,481,546 (“the '546 Patent”). For the reasons stated herein, the Court adopts the constructions set forth below.

BACKGROUND

Plaintiff Eon Corp. .IP Holdings, LLC (“Plaintiff’) alleges Defendants Sensus USA Inc. (“Sensus”) and Bell Industries, Inc. (“Bell”) (collectively, “Defendants”) infringe the '101 and '546 Patents. Co-pending before the Court is a related case, EON Corp. IP Holdings, LLC v. Verizon Clinton Center Drive, 6:08-cv-385 (“the Verizon case”). The parties have presented extensive claim construction briefing.

The Court was scheduled to hold a Markman hearing in the Verizon case (“the Verizon Markman”) three months earlier than in this case. In advance of that hearing, Sensus requested, and the Court granted, leave to brief certain claim terms that were common to the two cases (Doc. Nos. 116, 121). The Court further granted Sensus leave to be heard at the Verizon Markman (Doc. No. 126). Pursuant to the Court’s orders, Sensus submitted an initial brief on claim terms in common with the Verizon case (Doc. No. 124) (“Sensus Verizon Br.”) and Plaintiff responded to it (Doc. No. 131) (“Pl.’s Verizon Resp.”). On March 3, 2010, the Court held the Verizon Markman hearing and heard argument (Case No. 6:08-cv-385, Doc. Nos. 300, 308). Following that hearing, the Court granted Sensus and Plaintiff leave to file supplemental briefing regarding the term “portable” (Doc. No. 142, 143, 147) (“Sensus Portable Br.” and “Pl.’s Portable Resp.”).

On April 23, 2010, Plaintiff filed its opening claim construction brief in this case (Doc. No. 157) (“Pl.’s Br.”). Sensus and Bell filed independent responses (Doc. Nos. 159, 162) (“Sensus Resp.” and “Bell Resp.”). Plaintiff filed a reply, jointly addressing both responses (Doc. No. 167) (“Pl.’s Reply”). On June 10, 2010, the Court held a claim construction hearing and heard argument (Doc. No. 183). Pursuant to the Court’s comments during that hearing, the Court ordered supplemental briefing regarding the reexamination file (Doc. Nos. 180, 185, 192) (“Sensus Reexam Br.” and “Pl.’s Reexam Resp.”).

CLAIM CONSTRUCTION PRINCIPLES

“It is a ‘bedrock principle’ of patent law that ‘the claims of a patent define the invention to which the patentee is entitled the right to exclude.’ ” Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed.Cir. 2005) (quoting Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed.Cir.2004)). The Court examines a patent’s intrinsic evidence to define the patented invention’s scope. Id. at 1313-1314; Bell Atl. Network Servs., Inc. v. Covad Commc’ns Group, Inc., 262 F.3d 1258, 1267 (Fed.Cir.2001). Intrinsic evidence includes the claims, the rest of the specification, and the prosecution history. Phillips, 415 F.3d at 1312-13; Bell Atl. Network Servs., 262 F.3d at 1267. The Court gives claim terms their ordinary and customary meaning as understood by one of ordinary skill in the art at the time of the invention. Phillips, 415 F.3d at 1312-13; Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1368 (Fed.Cir. 2003).

Claim language guides the Court’s construction of claim terms. Phillips, 415 F.3d at 1314. “[T]he context in which a term is used in the asserted claim can be highly instructive.” Id. Other claims, asserted and unasserted, can provide additional instruction because “terms are normally used consistently throughout the patent.” Id. Differences among claims, such as additional limitations in dependent claims, can provide further guidance. Id.

“[CJlaims ‘must be read in view of the specification, of which they are a part.’ ” Id. (quoting Markman v. Westview Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir.1995)). “[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’ ” Id. (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed.Cir.1996)); Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1325 (Fed.Cir.2002). In the specification, a patentee may define his own terms, give a claim term a different meaning than it would otherwise possess, or disclaim or disavow some claim scope. Phillips, 415 F.3d at 1316. Although the Court generally presumes terms possess their ordinary meaning, this presumption can be overcome by statements of clear disclaimer. See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337, 1343-44 (Fed.Cir.2001). This presumption does not arise when the patentee acts as his own lexicographer. See Irdeto Access, Inc. v. Echostar Satellite Corp., 383 F.3d 1295, 1301 (Fed.Cir.2004).

The specification may also resolve ambiguous claim terms “where the ordinary and accustomed meaning of the words used in the claims lack sufficient clarity to permit the scope of the claim to be ascertained from the words alone.” Teleflex, Inc., 299 F.3d at 1325. For example, “[a] claim interpretation that excludes a preferred embodiment from the scope of the claim ‘is rarely, if ever, correct.’ ” Glo betrotter Software, Inc. v. Elan Computer Group, Inc., 362 F.3d 1367, 1381 (Fed.Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583). But, “[ajlthough the specification may aid the court in interpreting the meaning of disputed language in the claims, particular embodiments and examples appearing in the specification will not generally be read into the claims.” Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed.Cir.1988); see also Phillips, 415 F.3d at 1323.

The prosecution history is another tool to supply the proper context for claim construction because a patentee may define a term during prosecution of the patent. Home Diagnostics, Inc. v. LifeScan, Inc., 381 F.3d 1352, 1356 (Fed.Cir. 2004) (“As in the case of the specification, a patent applicant may define a term in prosecuting a patent”). The well established doctrine of prosecution disclaimer “preelud[es] patentees from recapturing through claim interpretation specific meanings disclaimed during prosecution.” Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed.Cir.2003). The prosecution history must show that the patentee clearly and unambiguously disclaimed or disavowed the proposed interpretation during prosecution to obtain claim allowance. Middleton, Inc. v. SM Co., 311 F.3d 1384, 1388 (Fed.Cir.2002). “Indeed, by distinguishing the claimed invention over the prior art, an applicant is indicating what the claims do not cover.” Spectrum Int’l v. Sterilite Corp., 164 F.3d 1372, 1378-79 (Fed.Cir.1998) (quotation omitted). “As a basic principle of claim interpretation, prosecution disclaimer promotes the public notice function of the intrinsic evidence and protects the public’s reliance on definitive statements made during prosecution.” Omega Eng’g, Inc., 334 F.3d at 1324.

Although “less significant than the intrinsic record in determining the legally operative meaning of claim language,” the Court may rely on extrinsic evidence to “shed useful light on the relevant art.” Phillips, 415 F.3d at 1317 (quotation omitted). Technical dictionaries and treatises may help the Court understand the underlying technology and the manner in which one skilled in the art might use claim terms, but such sources may also provide overly broad definitions or may not be indicative of how terms are used in the patent. Id. at 1318. Similarly, expert testimony may aid the Court in determining the particular meaning of a term in the pertinent field, but “conclusory, unsupported assertions by experts as to the definition of a claim term are not useful.” Id. Generally, extrinsic evidence is “less reliable than the patent and its prosecution history in determining how to read claim terms.” Id.

When claim construction involves means-plus-function limitations, the Court must identify the claimed function and the corresponding structure that performs that function. Applied Medical Resources Corp. v. U.S. Surgical Corp., 448 F.3d 1324, 1332 (Fed.Cir.2006). The Court’s construction of the function must include only the limitations in the claim language. Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 296 F.3d 1106, 1113 (Fed.Cir.2002). “Ordinary principles of claim construction govern the interpretation of the claim language used to describe the function.” Id. The Court must then determine if the specification discloses a structure that performs the claimed function and is clearly associated with the performance of the function. Id.

DISCUSSION

A. Overviews of the Patents-in-Suit

As the '546 Patent is a continuation of the '101 Patent, the patents are essentially identical except for the claims themselves. The patents “relate[] to an interactive two-way data service network for conveying synchronously timed digital messages point to point through the network.” '101 Patent at 1: 8-10. The invention was directed at facilitating long distance communication with subscriber units of maximum effective radiated power under twenty watts on the Federal Communication Commission (“FCC”) authorized 218-219 MHz band. Id. at 1:28-35. The network consists of “portable subscriber units of milliwatt transmitting power capacity,” id. at 3:35-36, base stations capable of transmitting data to the subscriber units, id. at 3:62-65, and “receive only stations” that relay communications from the subscriber units to the base stations. Id. at 3:65-4:2. Figure 2 illustrates an exemplary base station site:

The base station 3 is located at the center of a local area territory, delineated by ring 19. Id. at 5:40-47. Subscriber units x 4, 4’, etc. are distributed throughout the local area territory. Id. at 5:54-6:4. As the subscriber units transmit at a lower power than the base station, remote receive-only relay stations 20A-20N are positioned at strategic locations within the territory to relay communications from the subscriber units to the base station. Id.

Plaintiff accuses Bell of literally infringing claims 1, 2, 3, and 5-14 of the '546 Patent and infringing claim 4 of the '546 Patent under the doctrine of equivalents. Pl.’s Br. at 2. Plaintiff also accuses Bell of literally infringing claims 1, 2, 3, 8, 9, and 12-20 of the '101 Patent and infringing claims 4-7, 10, and 11 under the doctrine of equivalents. Id. Plaintiff accuses Sensus of literally infringing claims 1-3 and 5-14 of the '546 Patent and claims 1-3, 8, 9, 12, and 16-18 of the '101 Patent. Id. Plaintiff further accuses Sensus of infringing claims 4-6 and 10 of the '101 Patent under the doctrine of equivalents. Id.

B. Disputed Terms

Term Plaintiffs Proposed Sensus’s Proposed Bell’s Proposed Construction Construction Construction

interactive video network ‘101 Patent, Claims 1-15 ‘548 Patent, Claim 1 Preamble not limiting; no construction necessary. A network combining television broadcast and subscriber communications in which A network combining television broadcast and real time communications between

interactive video network system '101 Patent, Claims 16-18 '5í6 Patent, Claims 2-18

interactive video data system '101 Patent, Claims 19-20

subscribers receive and respond to inquiries related to the television broadcast.

Alternate Proposal: a network combining video broadcast and subscriber communications in which subscribers interact.

subscribers.

Alternate Proposal: An Interactive Video and Data Services (IVDS) system as defined in Subpart P of Part 95 of the rules of Federal Communications Commission, 47 C.F.R. § 95.801 et seq. (1992).

Plaintiff incorporates by reference its briefing in the Verizon case (Case No. 6:08-cv-385, Doc. Nos. 270, 280, 281) and this case (Doc. Nos. 147, 148, 156). In sum, Plaintiff contends the preamble is not limiting. Likewise, Sensus incorporates its Verizon case brief (Doc. No. 124) and Bell incorporates the defendant briefing in the Verizon case (Case No. 6:08-cv-385, Doc. Nos. 273, 274, 285).

“[A] preamble is not limiting ‘where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention.’ ” Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed.Cir.2002). However, the preamble to a claim is “given the effect of a limitation” when it is “considered necessary to give life, meaning, and vitality to the claims.” Kropa v. Robie, 38 C.C.P.A. 858, 187 F.2d 150, 152 (1951). Additionally, the preamble may be limiting where “a particular disputed preamble phrase” provides the antecedent basis for claim elements. Catalina, 289 F.3d at 808. “Likewise, when the preamble is essential to understand limitations or terms in the claim body, the preamble limits claim scope.” Id. Finally, the preamble is limiting when it is relied upon “during prosecution to distinguish the claimed invention from the prior art.” Id. “Without such reliance ... a preamble generally is not limiting when the claim body describes a structurally complete invention.” Id. at 809.

Sensus argues these preamble phrases direct the claims to an IVDS system. Sensus Verizon Br. at 2. Sensus further argues the preamble itself is limiting because it breathes life and meaning into the claims and provides antecedent bases and structural limitations. Id. at 3-4. Sensus concludes preambles limit the claims to an IVDS system. Id. at 4. Bell, through its incorporated briefing, argues similarly. Plaintiff contends the preambles merely state intended uses and are not limiting. Pl.’s Verizon Resp. at 2. Plaintiff argues the specification’s disclosure of non-video alternate embodiments further supports this conclusion. Id. at 3.

The specific preamble phrases in dispute are not limiting because they recite a statement of use and do not provide antecedent basis for any element nor do they introduce necessary structure into the claim.

In Claim 1 of the '101 Patent, which is exemplary for the purposes of resolving this dispute, the allegedly limiting phrase is “interactive video network.” The claim recites:

A base station configuration in a two-way communication interactive video network having a network hub switching center for routing communications from and to a plurality of subscriber units at various geographic locations served by a base station that processes digital data modulated on an r-f carrier and transmitted from a plurality of subscriber units dispersed over a predetermined base station geographic area by-presenting multiplexed digital data synchronously related to the base station broadcast signal for communication from identified individual subscriber units within designated geographic services areas

'101 Patent at 11:20-31. Said another way: Claim 1 claims “[a] base station configuration in a two-way communication interactive video network.” Id. at 11:20-21. The network has “a network hub switching center” and “a plurality of subscriber units.” Id. at 11:21-23. The subscriber units belonging to the network are “dispersed over a predetermined base station geographic area,” id. at 11:26-27, and located “at various geographic locations served by a base station.” Id. at 11:23-24. The base station “processes digital data.” Id. at 11:24-25. This digital data has been “modulated on an r-f carrier and transmitted from a plurality of subscriber units.” Id. at 11:25-26. The network hub switching center “rout[es] communications from and to” the subscriber units “by presenting multiplexed digital data ... for communication from identified individual subscriber units.” Id. at 11:22-30. Thus, the preamble describes the network in which the claimed base station configuration is intended to be used. See Catalina, 289 F.3d at 809 (observing “preambles describing the use of an invention generally do not limit the claims because the patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure”).

Additionally, the interactive video network phrase does not serve as the antecedent basis for an element in the claim body. The claim encompasses a base station configuration comprising “base station data processing and transmission facilities,” '101 Patent at 11:33, “base station reception means,” id. at 11:40, and “a set of local subscriber transceiver units.” Id. at 11:49. The base station transmits and receives digital data messages to and from local subscriber units. Id. at 11:33-39. Although the preamble describes these components as being part of the intended network for this base station configuration, the claim body independently sets forth a structurally complete invention. See Catalina, 289 F.3d at 808; see also Schumer v. Lab. Computer Sys., 308 F.3d 1304, 1310 (Fed.Cir.2002) (finding preamble not limiting “where the language of the preamble is superfluous”). Furthermore, the preamble does not provide an antecedent basis for nearly all of the claim elements. The only element that seemingly does rely on the claim preamble, “said base station geographic area,” '101 Patent at 11:43-44, is unrelated to the specific preamble phrase at issue — i.e., the interactive video phrase. See Bristol-Myers Squibb Co. v. Ben Venue Labs., 246 F.3d 1368, 1374-75 (Fed.Cir. 2001) (considering the limiting effect of preamble phrases independently). Finally, Defendants do not suggest the applicant relied on the preamble phrase during prosecution to distinguish prior art.

Further, “interactive video” does not restrict the base station configuration to use in a particular type of network. As discussed in more detail, infra, the claimed invention was directed towards utilizing the FCC’s 218-219 MHz band, which was referred to as “Interactive Video and Data Services.” Apparently, however, the FCC did not intend to limit the use of this band to interactive television. See 47 C.F.R. § 95.801 (1992). Like the inventor, which noted the use of low power subscriber units for applications such as meter reading and soft drink inventory monitoring, the FCC recognized the possibility of other applications for low power subscriber units. FCC Report and Order, May 16, 1996, WT Docket No. 95-47 at ¶ 12. Although the FCC would eventually rename the service to reflect the breadth of possible applications, the patents-in-suit were prosecuted while the service was still inaptly named. FCC 99-228, Order, Memorandum Opinion and Order and Notice of Proposed Rulemaking, released Sept. 18, 1998. Nonetheless, the patents-in-suit were not directed to “interactive video,” or “interactive television.” Nothing in the body of the claim would restrict the claimed structure to a “video” system, and the preamble phrase does not provide any essential structure to the complete invention described in the claim body. Additionally, it is noted that the patent discusses uses for the invention that do not involve “video” systems. See, e.g., '101 Patent at [57] (noting “monitoring of inventory, temperature, and other parameters for passive automatic alarm systems and the like, as well as active mobility of subscriber units for meter reading and the like is made possible with direct low-cost nationwide real time reporting capability”); id. at 6:5-8 (stating “this invention encourages such additional interactive services in the network as typified by meter reading, and inventory control in soft drink dispensing machines, etc.”). Furthermore, to the extent the preamble phrase provides context for the invention, it merely explains that the base station configuration was designed for use with an “interactive video” network, as it was understood by one of skill in the art of that day; that is, as a network operating on the 218-219 MHz band. This does not restrict the network to a television or “video” network. Moreover, this would still not change the preamble phrase into a limitation because such context still serves only to state an intended use. Catalina, 289 F.3d at 809.

In its supplemental briefing, Sensus argues the preamble is limiting because Plaintiff purportedly relied on it during reexamination of the patents-in-suit to distinguish prior art. Sensus Reexam Br. at 2-4, 5-11. Sensus also argues it is limiting because Plaintiff purportedly relied on it as a limitation during claim construction. Id. at 4-5. Plaintiff states it did not rely on the preamble to describe the scope of the claims and argues Sensus mischaracterizes its statements to the PTO. Pl.’s Reexam Resp. at 6-11.

Plaintiff did not rely on the preamble phrase as a limitation during the reexamination proceedings or the claim construction process in this or the Verizon case. In rebutting obviousness challenges, Plaintiff explained the Morales-Garza and Cunningham references were incompatible and would be inoperable in combination. See Def.’s Reexam Br. Ex. P at 5-7, 25. Plaintiff further rebutted the alleged regulatory motivation to adapt the Morales-Garza reference to the FCC’s IVDS system by noting its reliance on television signals would be incompatible with the FCC directive’s allocation of bandwidth. Id. at 8. Plaintiff did distinguish the Morales-Garza reference on the basis of transmission on a carrier frequency of substantially 218 MHz, but it was in the context of a dependent claim that was specifically limited to that frequency. Id. at 17. None of the reexamination arguments that Defendant identified constitute clear, unambiguous disclaimers of claim scope. See Omega Eng’g Inc., 334 F.3d at 1323-26. Likewise, Plaintiffs claim construction argument did not rely on the preamble phrase to distinguish the entire invention from any of the defendants’ proposed constructions. In one instance, a proposed construction would have limited the claim scope to television broadcast signals, which would have been incompatible with particular embodiments of the invention, such as the embodiment in the dependent claims restricting transmission to substantially the 218 MHz band. In the other instance, the proposed construction would have strictly limited claims cope to the FCC’s IVDS definition, improperly limiting all the claims to a particular embodiment. In neither case did Plaintiff rely on the interactive video preamble to distinguish all aspects of the invention from the proposed constructions.

The “interactive video” preamble phrases do not set forth essential structure of the invention, do not provide relevant antecedent bases, are unnecessary for understanding the limitations of the claim, and were not relied upon during prosecution. Relying on these “guideposts,” Catalina, 289 F.3d at 808, the Court finds these preamble terms are not limiting and do not require further construction.

Plaintiffs Proposed Sensus’s Proposed Bell’s Proposed Term Construction Construction Construction

base station data processing and transmission facilities '101 Patent, Claims 1-15

No construction Necessary.

If this term is subject to 35 U.S.C. § 112 ¶ 6, the construction should be the same as “base station data processing transmission means”:

This element should be construed according to 35 U.S.C. § 112, ¶ 6

Function: Transmitting to a set of local subscriber units and receiving from a subset of those local subscriber units multiplexed digital data messages of variable lengths for point-to-point communication between individual subscribers with remotely located reception means.

Function: Transmitting to a set of local subscriber units and receiving from a subset of those local subscriber units multiplexed digital data messages of variable lengths for point-to-point communication between individual subscribers with remotely located reception means.

Structure: Cell base station [local area base station cell] 3 (Figs. 1, 2, 6A, and 7A) utilizing the communication protocols to the extent disclosed in Figs 3, 4, 6B, 7B, 8A, 8B.

Structure: Cell base station [local area base station re-peater cell] 3 (Figs.l, 2, 6A, 7A), and communication protocols to the extent disclosed in Figs. 3, 4, 6B, 7B, 8A,8B

The parties again incorporate by reference previous briefing on this term. Although Sensus proposes a construction in the joint claim construction chart “[i]f the term is subject to 35 U.S.C. § 112 ¶ 6,” it does not specifically brief the term in any of its papers. Bell incorporates the defendant briefing from the Verizon case and Plaintiff incorporates its previous submissions on the term. In that briefing, Plaintiff argues the presumption that this is not a means-plus-function limitation is not overcome. The Verizon case defendant argued “facilities” is a nonce word and neither the phrase itself nor the rest of the claim language connotes structure to a person of ordinary skill in the art.

This term is not governed by 35 U.S.C. § 112, ¶ 6. The paragraph presumptively does not apply because “base station data processing and transmission facilities” does not use “means.” CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1369 (Fed.Cir.2002). Defendant “can rebut this presumption by demonstrating the claim term fails to recite sufficiently definite structure or else recites a function without reciting sufficient structure for performing that function.” Id. (internal quotation omitted). Generic terms “typically do not connote sufficiently definite structure.” Mass. Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 1354 (Fed.Cir.2006). However, “[e]laim language that further defines a generic term like ‘mechanism’ can sometimes add sufficient structure to avoid 112 ¶ 6.” Id. Plaintiff provides contemporaneous technical dictionaries defining “fácilities, transmission” as a “[gjeneral term for equipment which acts as a bearer of information signals: ... narrow and broadband radiocommunication systems.” Pl.’s Reply at EX. D. Additional structural is connoted by the adjacent claim language “base station data processing and transmission.” The McGraw-Hill Dictionary of Scientific and Technical Terms defines “base station,” in the field of communications, as “[a] land station, in the land mobile service, carrying on a service with land mobile stations (a base station may secondarily communicate with other base stations incident to communications with land mobile stations)” and as “[a] station in a land mobile system which remains in a fixed location and communicates with the mobile stations.” McGraw-Hill Dictionary op Scientific and Technical Terms 197 (5th ed.1994). This definition is consistent with the applicant’s use of the term throughout the specification. See, e.g., '101 Patent at 3:32-4:6 (describing the base station as transmitting and receiving messages to and from subscriber units). Thus, one of ordinary skill in the art would have understood “base station data processing and transmission facilities” to connote structure adequate to “transmit ] ... and receiv[e] ... digital data messages.” Therefore, the Court finds this term is not governed by 35 U.S.C. § 112, ¶ 6.

Term Plaintiffs Proposed Sensus’s Proposed Bell’s Proposed Construction Construction Construction

base station data processing and transmission means '546 Patent, Claim 1

data processing and transmission means 'Patent, Claims &-1S

No Construction Necessary

Should be construed according to 35 U.S.C. § 112 ¶ 6.

This element should be construed according to 35 U.S.C. § 112, ¶ 6.

Function (base station data processing and transmission means): Transmitting to a set of local subscriber units contained within said local base station geographic area associated with said local base station repeater cell means and receiving from a subset of said local set of subscriber units multiplexed synchronously related digital data messages of variable lengths for point-to-point communication between said local base station repeater cell means and said subset of said local subscriber units.

Function: transmitting to a set of said local subscriber units contained within said local base station geographic area associated with said local base station repeater cell means and receiving from a subset of said local set of subscriber units multiplexed synchronously related digital data messages of variable lengths.

Function (data processing and transmission means): Transmitting to and receiving from at least one of said plurality of said subscriber units multiplexed synchronously related data messages of variable lengths, such that point-to-point communication between said base station repeater cell means and said at least one of said plurality of subscriber units is possible.

Structure: Cell base station [local area base station repeater cell] 3 (Figs. 1, 2, 6A, 7A) and communication protocols to the extent disclosed in Figs. 3, 4, 6B, 7B, 8A, 8B.

Structure (both terms): Cell base station [local area base station repeater cell] 3 (Figs. 1, 2, 6A and 7A) utilizing the communication protocols to the extent disclosed in Figs. 3, 4, 6B, 7B, 8A, 8B._

Plaintiff and Bell incorporate by reference earlier briefing from the Verizon ease. Sensus largely joins with the Verizon case defendant’s proposal, but omits “processor 486” as part of the corresponding structure if the terms are governed by U.S.C. § 112, ¶ 6. Sensus Verizon Br. at 7-8. In the Verizon briefing, the defendant advocated a means-plus-function construction and Plaintiff argued the claim language proves adequate structure to overcome this presumption.

Unlike the base station facilities term, these terms “invoke a rebuttable presumption that § 112 ¶ 6 applies” because they use “means.” CCS Fitness, 288 F.3d at 1369. The presumption is overcome if “the claim recites sufficient structure for performing the described functions in their entirety.” TriMed, Inc. v. Stryker Corp., 514 F.3d 1256, 1259 (Fed.Cir.2008). As discussed, supra, “base station” possessed a well defined meaning in the art connoting structure for transmitting and receiving digital data messages, the function in both independent claims of the '546 Patent. The disputed terms must be read in the context of the entire patent. Phillips, 415 F.3d at 1314. In both independent claims the “base station data processing and transmission means,” '546 Patent at 10:65, and the “data processing and transmission means” are components further comprising a “base station repeater cell.” See, e.g., '546 Patent at 11:35-36. A repeater is “[a]n amplifier or other device that receives weak signals and delivers corresponding strong signals with or without reshaping of waveforms,” McGrawHill Dictionary of Scientific and Technical Terms 1688 (5th ed.1994), and a “repeater station,” ie., “repeater cell,” is simply “[a] station containing one or more repeaters.” McGraw-Hill Dictionary of Scientific and Technical Terms 1688 (5th ed.1994). The specification uses these terms in accordance with their ordinary meaning — that is, it describes a base station repeater as relaying a data message to another cell for delivery. See '101 Patent at 4:16-21 (describing the base station relaying received messages to a switching hub for ultimate delivery to individual subscribers in remote base stations). Reception, data processing and transmission components are standard, essential elements of a repeater cell, as one of ordinary skill would understand the term. Thus, read in context, the terms connote structure adequate to perform the transmission and receiving function.

Therefore, the Court finds these terms are not governed by 35 U.S.C. § 112, ¶ 6.

Plaintiffs Proposed Sensus’s Proposed Bell’s Proposed Term Construction Construction Construction

portable No Construction Necessary Readily movable while Readily movable while '101 Patent, Claims 17, 19, operable to communicate operable to communicate 20 '51,6 Patent, Claim 11,

mobile No Construction Necessary Readily movable while Readily movable while '101 Patent, Claims 1-15 operable to communicate operable to communicate '51,6 Patent, Claims 1, 5

stationary No Construction Necessary Not mobile or portable '101 Patent, Claims 16-18

The issue of portability has been extensively briefed. Plaintiff and Sensus briefed the terms “portable” and “mobile” in their supplemental Verizon case briefing. See Sensus Verizon Br. at 1-2; Pl.’s Verizon Resp. at 1-2. Additionally, Plaintiff and Sensus provided additional supplemental briefing on “portable.” See Sensus Portable Br.; Pl.’s Portable Resp. In their primary claim construction briefs, Plaintiff and Sensus largely rest on their previous argument but introduce additional argument regarding “stationary.” See Pl.’s Br. at 4-5; Sensus Resp. at 5-6. Bell incorporates by reference argument for “portable” and further advocates an identical construction for “mobile.” See Bell Resp. at 4-6. Bell did not address “stationary.” Finally, Plaintiff and Sensus discussed “portable” and “mobile” in the context of the reexamination. See Sensus Reexam Br. at 12-13; Pl.’s Reexam Resp. at 13.

The parties’ disagreement can fairly be summarized as three-pronged. First, Defendants contend the specification requires “portable” and “mobile” devices to be operable while moved. See Sensus Verizon Br. at 1-2; Bell Resp. at 4-6. Second, Sensus argues its construction is necessary in light of Plaintiffs infringement contentions. Sensus Portable Br. Finally, Sensus argues that Plaintiff, while distinguishing prior art, confirmed portability requires mobile operation. Sensus Reexam Br. at 12-13.

As an initial matter, the Court declines to construe “stationary.” Nothing in the specification indicates the term possesses anything other than its ordinary meaning. Sensus’s attempt to use the term to draw a distinction between it and “mobile” or “portable” is flawed. Mobile and portable are used in the claim language to describe subscriber units, whereas stationary is used to describe receive only terminals. Thus, even if “stationary” had a special meaning when describing receiver only terminals, the relevancy of that meaning is not readily apparent to the meaning of “mobile” or “portable” when describing subscriber units. Moreover, the term “stationary” does not bear on whether a given device may or may not be operable when moving. Claims 16-18 of the '101 Patent require only that the receive only terminals of the claimed system are stationary within that system. Nothing compels the conclusion that the receive only terminals may not be operable while moving nor that they may not be readily movable when not utilized in that specific system. In sum, the construction of this term is irrelevant to the parties’ genuine dispute over “mobile” and “portable.” Construing this term, when it is used in its plain and ordinary sense, is unnecessary and would only serve to distract or confuse a jury.

The specification does not use “portable” or “mobile” in a manner that requires a device to be “readily movable while operable to communicate.” In some instances, the term is used to describe a device capable of operating while moving. For example, in the Background Art section, the specification refers to “portable telephone communication systems.” '101 Patent at 1:68-2:1. However, the specification also uses the term where a device capable of operating while moving is not necessarily implied. See, e.g., id. at 6:27-30 (describing “[sjmall and portable home units are also possible. There is considerable advantage of longer battery life for portable units.”) And in other instances, the disclosed embodiment is one which does not suggest operation while moving. See, e.g., id. at 1:40-43 (describing “battery powered, portable subscriber units, suitable for such functions as meter reading”); id. at 6:5-8 (describing use of subscriber units for “meter reading, and inventory control in soft drink dispensing machines, etc.”). Thus, nothing in the specification suggests that the terms were used in a way inconsistent with their plain and ordinary meanings — i.e., “capable of being carried or moved about,” Merrian-Webster’s Collegiate Dictionary 907 (10th ed.1999), or “capable of being easily and conveniently transported.” McGraw-Hill Dictionary of Scientific and Technical Terms 1550 (5th ed.1994); see also CCS Fitness, 288 F.3d at 1366 (stating there is “a heavy presumption that a claim term carries its ordinary and customary meaning” (quotation omitted)). In some embodiments, these portable or mobile units may be operable while moving, but in other embodiments they are not. Thus, it would be improper to read such a limitation into the claims. Vitronics Corp., 90 F.3d at 1583. Although Plaintiff maintains the terms are not synonymous, see Pl.’s Verizon Br. at 1; Pl.’s Reply at 1 n. 1, it has not explained how the terms are meaningfully different.

The Court declines to construe the terms in light of the Sensus’s accused products. In its supplemental briefing, Sensus cites Plaintiffs infringement contentions, which accuse certain metering devices that must be affixed to gas and water lines. Sensus Portable Br. at 1. Sensus argues that failing to explicitly require mobile operation subjects its “fixed” and “stationary” devices to infringement allegations. Id. at 1-3. In response, Plaintiff notes Sensus’s claim construction position is inconsistent with its own trade use of the term “portable.” Pl.’s Portable Resp. at 3-5 (observing Sensus markets products that must be affixed to water lines as ‘portable’). Sensus’s claim construction argument is essentially a request for the Court to pass judgment on the merits of its non-infringement position. This is improper at this stage. The question is what these terms mean as used in the patents-in-suit, not whether Sensus’s accused products are “portable” or “mobile.” “A claim is construed in the light of the claim language, the other claims, the prior art, the prosecution history, and the specification, not in light of the accused device.” SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1118 (Fed.Cir.1985) (en banc) (emphasis original).

Finally, nothing in the cited portion of the reexamination file compels the Court to construe “mobile” and “portable” as Sensus wishes. Plaintiff distinguished claim 19 from the prior art, noting that the Martinez reference did not teach “facilities for communicating from the subscriber units when moved through different geographic zones.” See Sensus Reexam Br. Ex. P at 23-24. Plaintiff also noted the Martinez reference “does not teach or suggest movement through geographic zones,” but this was in the context of a discussion focused on the claimed facilities and offered as support for the conclusion the Martinez reference “accordingly, does not teach or suggest any such facilities .... ” Id. at 24. Therefore, Sensus’s reexamination briefing does not affect the Court’s conclusions.

Having resolved the parties’ claim scope dispute, the Court finds the terms do not require construction because their meanings are clear in the context of the claims and will be readily understandable to the jury. 02 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351, 1362 (Fed. Cir.2008); Fenner Inv. Ltd. v. Microsoft Corp., No. 6:07-cv-8, 2008 WL 3981838, at *3 (E.D.Tex. Aug. 22, 2008) (finding a court need no construe a disputed term so long as it has resolved the claim scope dispute between the parties). Although the Court does not construe these terms, the parties may not interpret them in a manner inconsistent with this opinion.

Term Plaintiffs Proposed Sensus’s Proposed Bell’s Proposed Construction Construction Construction

base station reception means '101 Patent, Claims 1-15

Subject to § 112 116;

Function: receiving and processing data messages from the set of local subscriber units at that base station;

Structure: “remote receivers 20A-20N or 22-22”, each connected by a link 21 to a local area base station repeater cell [cell base station] 3 (Figs. 1-2, 6A and 7A), and equivalents;

Should be construed according to 35 U.S.C. § 112 ¶ 6

Function: Receiving and processing data messages from the set of local subscriber units at that base station.

Structure: Indefinite.

This element should be construed according to 35 U.S.C. § 112, ¶ 6.

Function: Receiving and processing data messages from the set of local subscriber units at that base station.

Structure: Remote receivers 20AN or 22-22’, each connected by a link 21 to a local area base station repeater cell [cell base station] 3 (Figs. 1-2, 6A and 7A), including the communication protocol to the extent disclosed in Figs. 3, 4 6B, 7B, 8A, 8B.

reception means '5A6 Patent, Claims 2-13

No construction necessary with respect to claim 1 of the '546 Patent. In 546:2-13, subject to § 112 ¶ 6;

Function: receiving and processing said multiplexed synchronously related data messages from said at least one of said plurality of subscriber units and relaying said multiplexed synchronously related data messages from said at least one of said plurality of subscriber units to said base station repeater cell means;

Structure: “local area repeater station, local base station repeater cell, cell base station, cell (item 3 in FIG. 1, 2, 6A, 7A); relay station(s) 20A-20N (FIG. 2); 22-22’(FIG. 6A, 7A); remote receiver(s) 20-20A (FIG. 1); cell site transmission system 40 (FIG. 2); switch control center 14 (FIG. 1); terminal directory 13 (FIG. 1); and as described in the specification of the '546 Patent at 7:38-43, 3:58-63, 4:63-5:5, and 5:18-54, and equivalents;

Should be construed according to 35 U.S.C. § 112 ¶ 6.

Function [546:11: Receiving and processing data messages from said set of local subscriber units.

Function [546:2]: Receiving and processing said multiplexed synchronously related data messages from said at least one of said subscriber units and relaying said multiplexed synchronously related data messages from at least one of said plurality of subscriber units to said base station repeater cell means.

Structure (both claims): Indefinite.

This element should be construed according to 35 U.S.C. § 112, ¶ 6.

Function: Receiving and processing said multiplexed synchronously related data messages from said at least one of said plurality of subscriber units and relaying said multiplexed synchronously related data messages from said at least one of said plurality of subscriber units to said base station repeater cell means.

Structure: Remote receivers 20A-N or 22-22’, each connected by a link 21 to a local area base station repeater cell [cell base station] repeater cell [cell base station] 3 (Figs. 1-2, 6A and 7A), including the communication protocol to the extent disclosed in Figs. 3, 4, 6B, 7B, 8A, 8B.

Plaintiff and Bell largely rest on the Verizon case briefing. Sensus agrees with the Verizon case defendant’s proposal with respect to the receiving and relaying portions of the function. Sensus Verizon Br. at 8-9. Sensus argues the limitation is ultimately indefinite for failing to disclose structure for processing data messages. Id. Thus, apart from Sensus’s indefiniteness allegation, the parties’ positions do not differ substantially from those argued in the Verizon case. There, the defendant argued Plaintiffs proposals ignore that processing and receiving is performed at the base station and not elsewhere. Defendant additionally argued Plaintiffs corresponding structure included extraneous elements that were unnecessary to performing the claimed function. Plaintiff argued Figures 1 and 2, and their accompanying text, completely describe the corresponding function and the defendant’s proposals improperly import unnecessary elements from other figures.

These terms are subject to § 112, ¶ 6. As noted in the discussion of “processing and transmission means” terms, “base station” connotes structure to one of ordinary skill in the art. However, the claimed reception means are unlike reception means one of ordinary skill in the art would generally associate with a “base station.” As noted in the Background Art section, “[tjhere has been no known interactive video data service system available heretofore that has the capability of servicing an assigned base station area with subscriber units transmitting in a milliwatt power range.” '101 Patent 1:36-39. An objective of the invention was to provide “two-way interactive communications with simplified low-cost subscriber units transmitting in milliwatt peak power ranges under parameters compatible with FCC licensing restrictions.” Id. at 3:19-21. Thus, the invention comprised not only “a central transmitter and data processing site” but also “[a] plurality of receive only stations distributed throughout the region and connected ... to the central data processing site.” Id. at 3:62-68. The ordinary meaning of “base station” implied a single fixed communication and processing site, with which the “processing and transmission means” terms conformed, but would not include dispersed receivers as claimed by the “reception means” terms. Thus, although “base station” connotes some structure, it does not connote structure adequately supporting the claimed function here. Therefore, the terms as used in claims 1-15 of the '101 Patent and claim 2-13 of the '546 Patent are governed by 35 U.S.C. § 112, ¶ 6.

The Verizon defendant correctly identified the functions of the terms in the '101 and '546 Patents. The parties disagreed as to the corresponding structure. Figures 1 and 2 depict “a set of subscribers at response units 4 communicating] ... to either a set of local remote receivers 20, each connected by a link 21 ... to repeater cell 3, or to a local area base station repeater cell 3.” '101 Patent at 5:2-7. Local remote receivers 20A through 20N are likewise arranged. Id. at 5:54-62. The specification alternatively refers to the remote receivers as items 22 through 22’ in Figures 6A and 7A, which describes the base station as a cell base station and cell, respectively. The set of local remote receivers 20 through 20N (Figs. 1, 2), 22 through 22’ (Figs. 6A, 7A), and repeater cell, local are base station repeater cell, cell base station, cell 3 (collectively, “base station”) (Figs. 1, 2, 6A, 7A) perform the function of receiving and processing data messages from the local subscriber units. Local remote receivers 20 through 20N (Figs. 1, 2), 22 through 22’ (Figs. 6A, 7A), base station 3 (Figs. 1, 2, 6A, 7A), and link 21 (Figs. 2, 6A) perform the function of relaying the data messages to the base station repeater cell means. In its proposal, the Verizon defendant included link 21 and the communication protocols disclosed in Figures 3, 4, 6B, 7B, 8A, and 8B. Link 21 connects the remote receiver to the base station repeater cell, and is essential for relaying messages, but unnecessary for performing the receiving and processing function. Finally, the communication protocols are unrelated to either receiving messages from the subscriber units or to relaying the messages to the repeater cell. Plaintiff also identified additional structures from Figure 1, which it describes are “additional structure for carrying out the functions associated with ‘reception means.’ ” These structures are dissociated from either the remote receivers or the base station. The functions here relate only to receiving data messages at a remote receiver and relaying that message to the base station. The various control and billing centers Plaintiff identified, elements 2, 13, 14, 15, and 16 in Figure 1, are not part of that function, nor is cell site transmission system 40, which transmits to other base stations. Those elements may only be of relevance after a base station has already received a relayed message. Thus, the additional structure Plaintiff cited is unnecessary for performing those specific functions.

Finally, Sensus argues the limitation includes a processing function without any corresponding structure. As explained in the Court’s Report and Recommendation, the processing function is performed by the remote receiver. Therefore, adequate structure is recited to perform that function.

Accordingly, the function of the term in the '101 Patent is “receiving and processing data messages from the set of local subscriber units at that base station.” '101 Patent at 11:40-42. The corresponding structure is “remote receivers 20-20N (Figs. 1, 2), 22-22’ (Figs. 6A, 7A), and repeater cell, local are base station repeater cell, cell base station, cell 3 (Figs. 1, 2, 6A, 7A), and statutory equivalents.” The functions of the term in the '546 Patent are “receiving and processing said multiplexed synchronously related data messages from said at least one of said plurality of subscriber units and relaying said multiplexed synchronously related data messages from said at least one of said plurality of subscriber units to said base station repeater cell means.” '546 Patent at 11:44-49. The corresponding structure is “remote receivers 20-20N (Figs. 1, 2), 22-22’ (Figs. 6A, 7A), and repeater cell, local are base station repeater cell, cell base station, cell 3 (Figs. 1, 2, 6A, 7A), link 21 (Figs. 2, 6A), and statutory equivalents.”

Term Plaintiffs Proposed Construction Sensus’s Proposed Construction Bell’s Proposed Construction

base station broadcast signal '101 Patent, Claims 1-15 '5i6 Patent, Claim 1

a wireless signal transmitted to a plurality of subscriber units and/or

A wireless television signal transmitted from a base station to all subscriber units in the base station’s geographic area.

A wireless video signal transmitted from a base station to disseminate identical information to a plurality of subscriber units

Alternatively, “a wireless video signal transmitted by a base station to a plurality of subscribers and/or

Plaintiff and Sensus address this term in their supplemental Verizon case briefing. Bell and Plaintiff also incorporate the other relevant briefing filed by the parties in that case. Sensus’s proposal differs from the Verizon defendant’s in that it requires the wireless signal be a television signal, rather than video signal. Sensus VeRizon Br. at 3. Additionally, Sensus’s proposal requires the signal be transmitted to all subscriber units in the range of the base station. Id.

The patents-in-suit are not restricted video (or television) applications. Throughout the specification, the applicant referenced video or television broadcast. See, e.g., '101 Patent at 3:51-52 (describing synchronization with “television frames of a master TV channel”); id. at 5:46^47 (referring to the FCC’s “interactive video data service”). Despite these references, it is clear the patents-in-suit are broader than video or television transmission. See, e.g., '101 Patent at 6:5-13 (disclosing use of invention for “meter reading, and inventory control in soft drink dispensing machines” and noting in such applications “subscriber units 4 may be provided without the necessity for video displays”). The video references stem from FCC’s original name for short distance transmission on the 218-219 MHz band. See id. at 3:6-16 (explaining “[i]t is an objective of this invention to improve the state of the art by effectively using licensed interactive communication channels” and describing requirements of “the FCC licensing conditions for interactive video data service”); id. at 4:2-6 (stating “the base station serves a gridwork of receiver sub-cell sites distributed at locations permitting reliable response by subscribers transmitting with milliwatt digital signal levels in the FCC authorized 218-219 MHz band”). However, the FCC did not limit the Interactive Video and Data Service (“IVDS”) to television or video broadcast, acknowledging its utility as “a short distance communications service.” 47 C.F.R. § 95.801 (1992). Indeed, “the 218-219 MHz band is insufficient for the transmission of conventional full-motion video,” FCC 218-219 MHz Radio Service, available at http://wireless.fce. gov/services/index.htm?job=service-home & id=218-219, and the FCC rejected a request to limit IVDS to video applications, noting it was adaptable to “providing video, voice, or data” and that it “envisioned] a variety of uses for IVDS.” FCC Report and Order, May 16, 1996, WT Docket No. 95^47 at ¶ 12. In 1998, the FCC “[r]edesignate[d] this service as the ‘218-219 MHz Service’ to reflect the breadth of services evolving in this spectrum.” FCC 99-228, Order, Memorandum Opinion and Order and Notice of Proposed Rulemaking, released Sept. 17, 1998. Thus, although the specification frequently refers to video, the claimed invention is not so limited.

Furthermore, the specification and the prosecution history distinguish between a “broadcast signal” and a “television signal.” The specification describes a broadcast signal as including signals other than a video or television signal. '101 Patent at 6:63-68 (describing a ringing signal for activating a unit); id. at 7:3-5 (describing a control signal). Likewise, restricting a broadcast signal to a video or television signal would exclude preferred embodiments. See, e.g., id. at 1:40-43 (describing “battery powered, portable subscriber units, suitable for such functions as meter reading”); id. at 6:5-8 (describing use of subscriber units for “meter reading, and inventory control in soft drink dispensing machines, etc.”). The applicant similarly distinguished the claimed invention from a system restricted to television signals, stating in response to an office action “the Martinez reference specifically disclose[s] transmitting data messages which are integral with a conventional television signal. Such is not the case in the present invention.” Office Action Response, Dec. 12, 1994, at 4. Finally, dependent claim 11 specifically limits the broadcast signal to a television signal, indicating a broadcast signal is broader. See Nazomi Commc’ns, Inc. v. Ann Holdings, PLC, 403 F.3d 1364, 1370 (Fed.Cir.2005) (observing “[t]he concept of claim differentiation normally means that limitations stated in dependent claims are not to be read into the independent claim from which they depend” (quotation omitted)).

Finally, a broadcast signal may be intended for a specific subscriber unit, but it must be broadcast to all units. This is inherent in the term, as the claim language specifically describes the signal as a broadcast signal, as opposed to a multicast or unicast signal. Any given message transmitted by the base station to a subscriber unit is sent to all units. This does not foreclose sending a given message for a specific subscriber unit or units, see '101 Patent at 7:34-37 (describing addressing messages to specific units), but even a message intended for a specific unit is transmitted to all subscriber units within the base station geographic area.

Therefore, the Court construes this term as “a wireless signal transmitted to a plurality of subscriber units and/or receivers.”

Term Plaintiffs Proposed Construction Sensus’s Proposed Construction Bell’s Proposed Construction

synchronously related '101 Patent, Claims 1-15 '546 Patent, Claims 1-14

Related in time and/or frequency (which is the Plain and Ordinary Meaning)

A wireless television signal transmitted from a base station to all subscriber units in the base station’s geographic area.

Alternatively, “a wireless video signal transmitted by a base station to a plurality of subscriber’s and/or

Transmitted during response or blanking intervals of [base station broadcast signal] Indefinite in claims 546:2-13

Plaintiff and Bell again incorporate the Verizon case briefing. Sensus argues the data messages are synchronized in time and frequency by the base station broadcast signal “in order to avoid interference.” Sensus Verizon Br. at 6-7. Plaintiff disagrees with this construction, arguing it introduces two unnecessary limitations: 1) that the synchronization achieves a particular result; and 2) that the synchronization must be caused by the base station broadcast signal. Pl.’s Verizon Resp. at 4. Additionally, in its briefing on the reexamination proceedings, Sensus argues Plaintiff distinguished prior art on the basis that it only taught frequency synchronization. Sensus Reexam Br. at 13. Plaintiff argues it distinguished the prior art based on what was synchronously related, rather than how it was synchronously related. Pl.’s Reexam Resp. at 19. Plaintiff further argues its reexamination position did not affect the scope of all claims because the specific claim being distinguished expressly requires timing synchronization. Id. at 20.

With respect to the Verizon defendant’s argument, incorporated as Bell’s position, the claimed invention is not restricted to the protocol disclosed in the Morales patent. To the extent the parties’ arguments in the Verizon case turned on whether the broadcast signal is a television signal, the Court has resolved the issue for the reasons explained when discussing the “interactive video” and “broadcast signal” terms. The specification uses the “synchronous” and related words to discuss not only synchronization with a television signal, '101 Patent 3:50-52, but also speaks of “communications and switching connections [that] are synchronized throughout a nationwide network.” Id. at 3:52-54. This suggests synchronization is not necessarily limited to blanking intervals. Although the specification refers to the Morales patent during its discussion of synchronization, see id. at 7:43-53 (citing the Morales patent), the discussion primarily served to distinguish the invention “from any former telephone switching system art which is asynchronously switched.” Id. at 7:53-55. In sum, while Defendant’s proposal encompasses one of the disclosed embodiments, it is unnecessarily limiting.

Turning to Sensus’s argument, the Court rejects the proposed additional limitations. First, although a benefit of synchronization may be avoiding interference, Sensus provides no intrinsic evidence that this is the necessary result of synchronization as the term is used in the patents-in-suit. Second, although the patents-in-suit disclose synchronization to the base station

signal in some embodiments, not all embodiments are so limited. Indeed, some claims specifically require such synchronization, see '546 Patent at claim 1, while other claims do not. See id. at claim 2. Finally, Plaintiffs comments during reexamination regarding the Martinez reference’s teaching of synchronously related frequencies does not limit the present invention to synchronization in both time and frequency. Plaintiff distinguished the Martinez reference based on what was synchronized, but not on how it was synchronized.

Therefore, the Court construes this term as “related in time and/or frequency.”

Plaintiffs Proposed Sensus’s Proposed Bell’s Proposed Term Construction Construction Construction

means for providing for two-way digital communications between two different subscriber units '101 Patent, Claims 16-18

No Construction Necessary

Should be construed according to 35 U.S.C. § 112 ¶ 6.

Function [101:16]: Providing for two-way digital communications between two different subscriber units by a serial communication path extending through a base station, the satellite, the central station, the satellite, and back to a base station, wherein at least some of said base stations serve a set of subscriber units dispersed over a predetermined geographic area and comprise communication means ..., subscriber transmitter units ..., and data processing means____

Function [101:171: Providing for two-way digital communications between two different subscriber units by a serial communication path extending through a base station, the satellite, the central station, the satellite, and back to a base station, wherein at least some of said base stations serve a set of subscriber units dispersed over a predetermined geographic area and comprise communication means ..., subscriber transmitter units ..., data processing means ... [and] means to receive____

Function [101:181: Providing for two-way digital communications between

This element should be construed accordi