IN THE UNITED STATES DISTRICT COURT EASTERN DISTRICT OF … · 2017. 2. 7. · Civil Action No. 2:16-cv-00056-JRG-RSP JURY TRIAL DEMANDED JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT

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IN THE UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF TEXAS

MARSHALL DIVISION

HUAWEI TECHNOLOGIES CO. LTD.,

Plaintiff,

v.

T-MOBILE US, INC. and

T-MOBILE USA, INC.,

Defendants,

NOKIA SOLUTIONS AND NETWORKS US

LLC, NOKIA SOLUTIONS AND NETWORKS

OY, TELEFONAKTIEBOLAGET LM

ERICSSON, and ERICSSON INC.,

Intervenors.

Civil Action No. 2:16-cv-00056-JRG-RSP

JURY TRIAL DEMANDED

JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT

Plaintiff Huawei Technologies Co. Ltd., Defendants T-Mobile US, Inc. and T-Mobile

USA, Inc., and Intervenors Nokia Solutions and Networks US LLC, Nokia Solutions and Networks

Oy, Telefonaktiebolaget LM Ericsson, and Ericsson Inc. hereby submit this Joint Claim

Construction and Prehearing Statement in the above-styled consolidated cases pursuant to P.R. 4-

3 and this Court’s Docket Control Order regarding U.S. Patent Nos. 8,537,779; 8,638,750; and

8,031,677.

I. P.R. 4-3(a): The Construction of Claim Terms, Phrases, or Clauses on Which the

Parties Agree.

None.

II. P.R. 4-3(b): Each Party’s Proposed Constructions.

The parties’ proposed constructions, intrinsic, and extrinsic evidence are attached hereto

Case 2:16-cv-00056-JRG-RSP Document 110 Filed 12/08/16 Page 1 of 7 PageID #: 931

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as Exhibit A. The chart in Exhibit A identifies the intrinsic and extrinsic evidence that the

respective parties presently intend to rely upon in support of their proposed constructions or to

oppose any other party’s proposed constructions. Each party also reserves the right to cite to

intrinsic and/or extrinsic evidence cited by another party.

III. P.R. 4-3(c): The Anticipated Length of Time Necessary for the Claim Construction

Hearing.

The parties respectfully request that the Court allot 3 hours for the claim construction

hearing.

IV. P.R. 4-3(d): Whether Any Party Proposes to Call One or More Witnesses.

At the present time, no party proposes to call witnesses for live testimony at the claim

construction hearing. NSN, T-Mobile & Ericsson have provided a brief summary of their experts’

opinions in Exhibit A below. Huawei has provided a brief summary of its expert’s opinions in

Exhibit B. The parties agree to submit expert testimony via declarations. The party submitting

expert testimony need not disclose it prior to attaching the declaration as an exhibit to its claim

construction brief. The parties agree to forego depositions of the claim construction experts for

use at the Markman hearing.

V. P.R. 4-3(e): A List of Any other Issues That Might Appropriately Be Taken Up at a

Prehearing Conference.

The parties are not presently aware of any issues which might be taken up at a prehearing

conference.

Dated: December 8, 2016 Respectfully submitted,

By: /s/ Neil Warren Ruffin Cordell

Texas Bar No. 04820550

[email protected]

Linda Kordziel

DC Bar No. 446386

[email protected]


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FISH & RICHARDSON P.C.

1425 K Street, N.W., 11th Floor

Washington, D.C. 20005

Telephone: (202) 783-5070

Facsimile: (202) 783-2331

Thomas H. Reger II


[email protected]

Carl E. Bruce


[email protected]

David B. Conrad


[email protected]

Jane Du


[email protected]


1717 Main Street, Suite 5000

Dallas, TX 75201

Telephone: (214) 747-5070

Facsimile: (214) 747-2091

David Barkan

California Bar No. 160825

[email protected]

Neil Warren

California Bar No. 272770

[email protected]


500 Arguello Street, Suite 500

Redwood City, CA 94063

Telephone: (650) 839-5070

Facsimile: (650) 839-5071

Kevin Su

Massachusetts Bar No. 663726

[email protected]


One Marina Park Drive

Boston, MA 02210

Telephone: (617) 542-5070

Facsimile: (617) 542-8906

COUNSEL FOR PLAINTIFF HUAWEI TECHNOLOGIES CO. LTD.


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/s/ Mark D. Selwyn

Mark D. Selwyn

(California Bar No. 244180)

Kathryn D. Zalewski

(California Bar No. 263119)

WILMER CUTLER PICKERING

HALE AND DORR LLP

950 Page Mill Road

Palo Alto, California 94304

(650) 858-6000

Joseph J. Mueller

(Massachusetts Bar No. 647567)

Cynthia Vreeland

(Texas Bar No. 20625150

Massachusetts Bar No. 635143)

WILMER CUTLER PICKERING

HALE AND DORR LLP

60 State Street

Boston, MA 02109

(627) 526-6000

Michael E. Jones

SBN: 10929400

POTTER MINTON, PC

110 North College, Suite 500

Tyler, Texas 75702

Tel. 903-597-8311

Fax 903-593-0846

Email: [email protected]

ATTORNEYS FOR DEFENDANTS T-

MOBILE US, INC. AND T-MOBILE

USA, INC.

/s/ John Haynes

John Haynes (GA Bar No. 340599)

Patrick Flinn (GA Bar No. 264540)

Michael C. Deane (GA Bar No. 498195)

Nicholas Tsui (GA Bar No. 982502)

ALSTON & BIRD LLP

1201 W. Peachtree St.

Atlanta, GA 30309-3424

Telephone: (404) 881-7000

Facsimile: (404) 881-7777



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Michael J. Newton (TX Bar No. 24003844)

Derek Neilson (TX Bar No. 24072255)

ALSTON & BIRD LLP

2800 N. Harwood St., Suite 1800

Dallas, Texas 75201

Telephone: (214) 922-3400

Facsimile: (214) 922-3899



M. Scott Stevens (NC Bar No. 37828)

Ross R. Barton (NC Bar No. 37179)

Linda Chang (NC Bar No. 44290)

Robert Caison (NC Bar No. 46632)

Samuel Merritt (NC Bar No. 47945)

M. Joseph Fernando (NC Bar No. 49199)

ALSTON & BIRD LLP

Bank of America Plaza

101 South Tryon Street, Suite 4000

Charlotte, NC 28280-4000

Telephone: (704) 444-1000

Facsimile: (704) 444-1111







Marsha E. Diedrich (CA Bar No. 93709)

ALSTON & BIRD LLP

333 South Hope Street

16th Floor

Los Angeles, CA 90071

Telephone: (213) 576-1000

Facsimile: (213) 576-1100


Thomas Davison (FL Bar No. 55687)

ALSTON & BIRD LLP

The Atlantic Building

950 F Street, NW


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Washington, DC 20004-1404

Telephone: (202) 239-3300

Facsimile: (202) 239-3333


Deron R. Dacus

Texas State Bar No. 790553

THE DACUS FIRM, P.C.

821 ESE Loop 323, Suite 430

Tyler, TX 75701

Telephone: (903) 705-1117

Facsimile: (903) 581-2543


COUNSEL FOR INTERVENORS

NOKIA SOLUTIONS AND

NETWORKS US LLC AND NOKIA

SOLUTIONS AND NETWORKS OY.

By: /s/ Phillip B. Philbin

Phillip B. Philbin

State Bar No. 15909020

Jamie H. McDole


Charles M. Jones II


Michael D. Karson


Hamilton C. Simpson


HAYNES AND BOONE, LLP

2323 Victory Avenue, Suite 700

Dallas, Texas 75219

Tel.: (214) 651-5000

Fax: (214) 651-5940

Email:

[email protected]

[email protected]

[email protected]

[email protected]

[email protected]

ATTORNEYS FOR INTERVENORS

TELEFONAKTIEBOLAGET LM

ERICSSON AND ERICSSON INC.


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CERTIFICATE OF SERVICE

I hereby certify that a true and correct copy of the above and foregoing document has

been served on December 8, 2016 to all counsel of record who are deemed to have consented to

electronic service via the Court’s CM/ECF system per Local Rule CV-5(a)(3).

/s/ Neil Warren

Neil Warren


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EXHIBIT A

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EXHIBIT B


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Summary of Opinions by Huawei’s Claim Construction Expert, Dr. Jonathan Wells

If T-Mobile or NSN submits expert testimony as identified in its P.R. 4-2 and 4-3

disclosures, Huawei intends to submit a declaration from its claim construction expert,

Dr. Jonathan Wells, with its reply claim construction brief. Huawei will rely on Dr.

Wells’ opinions in opposing Defendants’ proposed constructions and rebutting

Defendants’ expert’s opinions. Huawei provides herein a brief description of the

substance of Dr. Wells’ proposed testimony.

Dr. Wells has been asked to consider the following topics with respect to the

Patents-in-Suit:

a) The level of ordinary skill in the art with respect to U.S. Patent No. 8,638,750

(the “’750 Patent”), U.S. Patent No. 8,537,779 (the “’779 Patent”); and U.S.

Patent No. 8,031,677 (the “’677 Patent”); as well as

b) How the claim terms listed in Exhibit A would have been understood by one

of ordinary skill in the art at the time of the respective inventions, in light of

the intrinsic and extrinsic evidence.

I. Level of Ordinary Skill in the Art

1. Dr. Wells will address the level of ordinary skill in the art with respect to

the ’750, ’779, and ’677 Patents.

II. Patent Terms

a. “Create Bearer Request message” (’779 Patent, Claim 4)

2. To the extent Defendants offer expert testimony in support of their

construction of this term, Dr. Wells will respond to Defendants’ assertion that “Create

Bearer Request” means “a message titled Create Bearer Request” and will opine that a


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person of ordinary skill in the art would not have understood the term in this manner

with reference to the claims, figures, specification, prosecution history or prior art of the

’779 Patent. Dr. Wells will opine that a person of ordinary skill in the art would have

understood consistent with its plain meaning. Dr. Wells may rely on the representative

support as identified by Huawei in Exhibit A and any other materials identified by

Defendants or Intervenors.

b. “attach request” (’750 Patent, Claims 2, 3, 8, 9, 14, & 15)


construction of this term, Dr. Wells will respond to Defendants’ assertion that “attach

request” is indefinite or lacks written description and will opine that a person of

ordinary skill in the art would not have considered this term to lack a written

description with reference to the claims, figures, specification, and prosecution history

of the ’779 Patent. Dr. Wells will opine that a person of ordinary skill in the art would

have understood this term consistent with its plain meaning. Dr. Wells may rely on the

representative support as identified by Huawei in Exhibit A and any other materials

identified by Defendants or Intervenors.

c. “Create Default Bearer Request Message” (’750 Patent, Claims

4, 10, 17)


construction of this term, Dr. Wells will respond to Defendants’ assertion that “Create

Default Bearer Request” means “a message titled Create Default Bearer Request” and

will opine that a person of ordinary skill in the art would not have understood the term

in this manner with reference to the claims, figures, specification, prosecution history or

prior art of the ’750 Patent. Dr. Wells will opine that a person of ordinary skill in the art


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would have understood consistent with its plain meaning. Dr. Wells may rely on the



d. “A method for detaching a user equipment (UE) when a

handover from a 3rd generation partnership project (3GPP)

network to a non-3GPP network occurs, comprising” (’677

patent, Claim 1)


construction of this term, Dr. Wells will respond to Defendants’ assertion that the

preamble is limiting and will opine that a person of ordinary skill in the art would not

have understood the term this manner with reference to the claims, figures,

specification, and prosecution history of the ’677 Patent. Dr. Wells may rely on the



e. “detaching, by the MME, the UE from the 3GPP network” /

“detach the UE from the 3GPP network” (’677 patent, Claims 1,

8)


construction of this term, Dr. Wells will respond to Defendants’ assertion that it means

“deleting the MM context of the UE by the MME” / “delete the MM context of the UE, by

the MME,” and will opine that a person of ordinary skill in the art would not have

understood the term in this manner with reference to the claims, figures, specification,

and prosecution history of the ’677 Patent. Dr. Wells will opine that a person of ordinary

skill in the art would have understood this term to mean “deleting an MM context of the


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UE by the MME” / “delete an MM context of the UE, by the MME.” Dr. Wells may rely

on the representative support as identified by Huawei in Exhibit A and any other

materials identified by Defendants or Intervenors.

III. Alleged Means-Plus-Function Terms

7. Dr. Wells will respond to Defendants’ assertion that the purported means-

plus-function claim terms proposed for construction by Defendants1 lack any

1 “a receiver . . . the receiver is configured to receive, from a user equipment (UE), an access

request message for access the 3GPP access system; . . . wherein the access request message

includes the first handover indication information indicating that the access is a handover

access” (’750 Patent, Claim 1);

“a transmitter configured to communicatively connect with the receiver, . . .the transmitter is

configured to send a resource request message to a packet data network gateway (PDN GW)

to create resources for the UE to be used in the 3GPP access system, . . . wherein, in response

to the first handover indication information being included in the access request message, the

resource request message is configured to include second handover indication information,

which indicates that the resource request message is caused by a handover access; and

wherein the second handover indication information is configured to be carried by an

indication flag of the resource request message, the indication flag including one of a

handover indication flag, a create type flag which is set to be handover create, and cause flag

which is set to be handover cause” (’750 Patent, Claim 1);

“a mobility management network device configured to be responsible for mobility management,

wherein, during a handover of a user equipment (UE) from a non-3rd Generation Partnership

Project (non-3GPP) access system to a 3GPP access system, the mobility management

network device is configured to:

receive, from the UE, an access request message for access the 3GPP access system; and send a

resource request message to a packet data network gateway (PDN GW) to request the PDG

GW to create resources for the UE to be used in the 3GPP access system, wherein the access

request message includes first handover indication information indicating that the access is a

handover access; and wherein, in response to the first handover indication information being

included in the access request message, the mobility management network device is

configured to include second handover indication information indicating that the resource

request message is caused by a handover access into the resource request message; and,

wherein the mobility management network device is configured to carry the second handover

indication information by an indication flag of the resource request message, the indication

flag including one of a handover indication flag, a create type flag which is set to be

handover create, and cause flag which is set to be handover cause” (’750 Patent, Claim 13);

“an obtaining unit, configured to receive an attach request message sent by a User Equipment

(UE) during a handover from a non 3rd Generation Partnership Project (non-3GPP) network

to a 3rd Generation Partnership Project (3GPP) network, wherein the attach request message

comprises an information element indicating handover” (’779 Patent, Claim 11);


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corresponding structure and will opine that a person of ordinary skill in the art would

have understood these terms within the context of the ’779 and ’750 Patents in the first

instance, but in any event would have understood their corresponding structures with

reference to the claims, figures, specification, and prosecution history of the ’779 and

’750 Patents. Dr. Wells may rely on the representative support as identified by Huawei

in Exhibit A and any other materials identified by Defendants or Intervenors.

“an identifying unit, configured to identify that the attach request message is due to the handover

according to the IE indicating handover” (’779 Patent, Claim 11);

“a processing unit, configured to identify a Packet Data Network Gateway (PDN GW) whose

address is used by the UE in the non-3GPP network by communicating with a Home

Subscriber Server (HSS), and request the PDN GW to initiate a bearer creation procedure”

(’779 Patent, Claim 11).


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Documents

IN THE UNITED STATES DISTRICT COURT EASTERN DISTRICT OF … · 2017. 2. 7. · Civil Action No. 2:16-cv-00056-JRG-RSP JURY TRIAL DEMANDED JOINT CLAIM CONSTRUCTION AND PREHEARING STATEMENT