MEMORANDUM OPINION AND ORDER

K. NICOLE MITCHELL, Magistrate Judge.

This Memorandum Opinion resolves an additional claim construction dispute in United States Patent No. 8,055,820 ("the '820 Patent"). For the reasons discussed below, the Court resolves the dispute as stated.

BACKGROUND

On July 19, 2016, Plaintiff Cellular Communications Equipment LLC ("CCE") filed a Motion to Enforce Compliance with O2 Micro and to Resolve a Claim Construction Dispute That Defendants Intend to Argue to the Jury (Doc. No. 127). The Court heard argument on dispositive and Daubert Motions on August 22, 2016. At that hearing, the Court also heard argument on CCE's Motion.

The '820 Patent, titled "Apparatus, System, and Method for Designating a Buffer Status Reporting Format Based on Detected Pre-Selected Buffer Conditions," issued on November 8, 2011 and bears a priority date of November 5, 2007. The Abstract of the '820 Patent states:

The Court previously entered two Memorandum Opinion and Orders regarding claim construction as to the '802 Patent in the present litigation. See Doc. Nos. 163 & 165.

APPLICABLE LAW

"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., Inc., 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 un-asserted, 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.

"[C]laims `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), aff'd, 517 U.S. 370 (1996)). "[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 that 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.'" Globetrotter Software, Inc. v. Elam Computer Group Inc., 362 F.3d 1367, 1381 (Fed. Cir. 2004) (quoting Vitronics Corp., 90 F.3d at 1583). But, "[a]lthough 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 wellestablished doctrine of prosecution disclaimer, "preclud[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. 3M Co., 311 F.3d 1384, 1388 (Fed. Cir. 2002); see also Springs Window Fashions LP v. Novo Indus., L.P., 323 F.3d 989, 994 (Fed. Cir. 2003) ("The disclaimer . . . must be effected with `reasonable clarity and deliberateness.'") (citations omitted)). "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. 1988) (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.

CLAIM CONSTRUCTION

A. "uplink bandwidth"

Doc. No. 156 at 3 & 15; Doc. No. 231 at 1. This term appears in Claims 1, 6, 12, 17, 23, and 24 of the '820 Patent.

(1) The Parties' Positions

During the course of briefing, the parties reached agreement that there exists a claim construction dispute. See Doc. No. 231 at 1.

Plaintiff submits that, during prosecution, the patentee replaced "uplink capacity" with "uplink bandwidth," and for support the patentee referred to paragraph 66 of the specification, which is set forth in the issued '820 Patent at column 10, lines 29-54. Doc. No. 127 at 7-8.

Defendants respond that the specification uses "bandwidth" to refer to a range of frequencies. Doc. No. 156 at 7 (citing '820 Patent at 6:64, 6:65 & 7:1). Defendants also submit that the disclosure cited by Plaintiff (and cited by the patentee during prosecution) "is describing the purported benefits of the invention—minimizing `overhead' and adapting to `bandwidth.' In other words, the decision based on the uplink grant size may have the downstream effect of adapting to available bandwidth, but this does not mean the uplink grant is the same thing as bandwidth." Doc. No. 156 at 7. Defendants submit that this disclosure "bears none of the hallmarks of lexicography—no express definitional language, no `i.e.' equating `uplink grant' and `bandwidth,' and not even a direct link between the two different terms." Id. at 10. As to the prosecution history itself, Defendants argue that the patentee distinguished the cited "Wu" reference, which Defendants submit disclosed selecting BSR [(buffer status report)] format based on available space in a PDU [(protocol data unit)]. See id. at 10-15. Defendants argue that Plaintiff cannot recapture what the patentee thus distinguished during prosecution. See id. Further, Defendants cite extrinsic dictionary definitions as well as expert opinions. See id. at 8-10. Defendants conclude that "`bandwidth' is a range of frequencies or data transmission rate and does not encompass space in the PDU and does not include capacity." Id. at 8.

Plaintiff replies that Defendants' proposed interpretation is at odds with the specification, and as to the prosecution history Plaintiff argues:

Doc. No. 231 at 6-7.

(2) Analysis

Claim 1 of the '820 Patent, for example, recites (emphasis added):

On one hand, as Defendants emphasized at the August 22, 2016 hearing, the February 2, 2011 Office Action asserted that Wu teaches that use of a long BSR is based on whether there is sufficient remaining space in the PDU to accommodate a long BSR:

Doc. No. 156, Ex. 1, Feb. 2, 2011 Office Action at 4.

On the other hand, when the patentee replaced "uplink capacity" with "uplink bandwidth," the patentee cited as support the following disclosure that appears in the specification of the '820 Patent:

'820 Patent at 10:29-44 (emphasis added).

This disclosure refers to "UL [(uplink)] bandwidth" in the context of the uplink grant, which is what Defendants argue was distinguished. Nonetheless, this context differs from space in an uplink buffer, which evidently had been the examiner's understanding as set forth in an examiner interview summary:

Doc. No. 127, Ex. A, May 27, 2011 Interview Summary (CCE001398).

A reasonable reading of this prosecution history is that the patentee clarified that BSR format selection depends on the space available in an uplink grant. Because the prosecution history cited by Defendants thus itself appears to be inconsistent with Defendants' argument or at least is equally consistent with Plaintiff's argument, the Court hereby expressly rejects Defendant's prosecution history argument. See Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1332 (Fed. Cir. 2004) ("Because the statements in the prosecution history are subject to multiple reasonable interpretations, they do not constitute a clear and unmistakable departure from the ordinary meaning of the term . . . ."). Also of note, whereas Defendants have focused on characterizing the Wu reference in a particular manner, and whereas Defendants have focused on the examiner's statements during prosecution, "[i]t is well settled, however, that it is the applicant, not the examiner, who must give up or disclaim subject matter that would otherwise fall within the scope of the claims." Innova/Pure Water, Inc., 381 F.3d at 1124.

As to whether any construction is required, "[t]he Court believes that some construction of the disputed claim language will assist the jury to understand the claims." See TQP Dev., LLC v. Merrill Lynch & Co., Inc., No. 2:08-CV-471, 2012 WL 1940849, at *2 (E.D. Tex. May 29, 2012) (Bryson, J.). As to the proper construction, Defendants have not adequately demonstrated that a "range of frequencies," such as described in the extrinsic evidence submitted by Defendants, would be relevant in the context of the claims at issue.

Thus, based on the above-discussed prosecution history and the above-quoted disclosure in the specification, the Court hereby construes "uplink bandwidth" to mean "the space available in an uplink grant."

CONCLUSION

The Court hereby adopts the above claim construction.

SO ORDERED.