United States Court of Appeals
for the Federal Circuit
______________________
INTELLECTUAL VENTURES I LLC,
Plaintiff-Appellant
v.
T-MOBILE USA, INC., T-MOBILE US, INC.,
ERICSSON INC., TELEFONAKTIEBOLAGET LM
ERICSSON, UNITED STATES CELLULAR
CORPORATION,
Defendants-Appellees
______________________
2017-2434, 2017-2435
______________________
Appeals from the United States District Court for the
District of Delaware in Nos. 1:13-cv-01671-LPS, 1:13-cv-
01672-LPS, Chief Judge Leonard P. Stark.
______________________
Decided: September 4, 2018
______________________
MARTIN JAY BLACK, Dechert LLP, Philadelphia, PA,
argued for plaintiff-appellant. Also represented by
ALEXANDRA FELLOWES, Mountain View, CA; ROBERT
RHOAD, Princeton, NJ.
DOUGLAS M. KUBEHL, Baker Botts, LLP, Dallas, TX,
argued for defendants-appellees. Also represented by
MELISSA BUTLER, SAMARA KLINE, JOHNSON KURIAKOSE
KUNCHERIA.
2 INTELLECTUAL VENTURES I LLC v. T-MOBILE USA, INC.
______________________
Before PROST, Chief Judge, MOORE and REYNA, Circuit
Judges.
MOORE, Circuit Judge.
Intellectual Ventures I LLC (“IV”) appeals from a
grant of summary judgment by the U.S. District Court for
the District of Delaware that T-Mobile USA, Inc., T-
Mobile US, Inc., Ericsson Inc., Telefonaktiebolaget LM
Ericsson, and United States Cellular Corporation (collec-
tively, “T-Mobile”) have not infringed U.S. Patent
No. 6,640,248. Because we hold that the district court’s
grant of summary judgment resulted from an erroneous
claim construction, we vacate and remand. We affirm the
district court’s determination regarding indefiniteness.
BACKGROUND
The ’248 patent describes “an application-aware re-
source allocator” that allocates bandwidth resources to
transmit information from software applications over a
packet-switched network. ’248 patent at Abstract, 2:64–
3:2. The patent explains that quality of service (“QoS”)
requirements may vary among applications, with some
types of applications demanding, for instance, error
minimization, and others prioritizing speed. Id. at 14:43–
50. To meet these varying requirements, the applica-
tion-aware resource allocator “allocates bandwidth re-
source to an application based on an application type.” Id.
at 3:50–51. In particular, the application-aware resource
allocator allocates resources to an internet protocol (“IP”)
flow of IP packets associated with the application. Id. at
3:60–61.
INTELLECTUAL VENTURES I LLC v. T-MOBILE USA, INC. 3
The ’248 patent describes the application-aware re-
source allocator with reference to the seven-layer Open
Systems Interface networking protocol stack standard
(“OSI standard”), which includes a “physical layer” at
layer 1, a “data link layer” at layer 2, a “network layer” at
layer 3, a “transport layer” at layer 4, and an “application
layer” at layer 7. Id. at 42:24–28. The OSI standard is
illustrated in Figure 4 of the ’248 patent, below, which
depicts the physical layer 402, the data link layer 404, the
network layer 406, the transport layer 410, and the
application layer 412.
As shown in Figure 4, at the data link layer 404 is a
“media access control (MAC) layer 414,” which includes
“MAC layer portion 414a” and the application-aware
resource allocator, labeled as “proactive reservation-based
intelligent multi-media access (PRIMMA)” portions 414b,
414c. Id. at 42:42–47. The ’248 patent teaches that the
application-aware resource allocator at the MAC lay-
er 414 can determine the QoS requirements for an appli-
cation by analyzing information obtained from application
4 INTELLECTUAL VENTURES I LLC v. T-MOBILE USA, INC.
layer 412, transport layer 410, or network layer 408. Id.
at 42:47–53.
The ’248 patent includes independent claims 1 and 20,
which recite:
1. An application aware, quality of service (QoS)
sensitive, media access control (MAC) layer com-
prising:
an application-aware resource allocator at
the MAC layer, wherein said resource allo-
cator allocates bandwidth resource to an
internet protocol (IP) flow associated with
a software application of a user based on
IP QoS requirements of said software ap-
plication, wherein said resource allocator
allocates said bandwidth resource in a
packet centric manner that is not cir-
cuit-centric and does not use asynchro-
nous transfer mode (ATM).
20. An application-aware media access control
(MAC) layer for optimizing end user application
internet protocol (IP) quality of service (QoS) to IP
flows comprising:
identifying means for identifying an appli-
cation type of a software application asso-
ciated with an IP flow; and
allocating means for allocating resources
to said IP flow, responsive to said identify-
ing means, so as to optimize end user ap-
plication IP QoS requirements of said
software application, wherein said re-
source allocating means allocates re-
sources in a packet-centric manner that is
not circuit-centric and does not use asyn-
chronous transfer mode (ATM).
INTELLECTUAL VENTURES I LLC v. T-MOBILE USA, INC. 5
Id. at 83:6–15; 84:42–53 (emphases added).
The parties disputed the construction of “applica-
tion-aware resource allocator” in claim 1 and “applica-
tion-aware media access control (MAC) layer” in claim 20.
IV offered a construction requiring that the resource
allocator “allocate[] resources based on application type.”
J.A. 4419. Under IV’s construction, the application type
can be discerned by the resource allocator using infor-
mation obtained from any of the network layer 3, the
transport layer 4, and the application layer 7. J.A. 4419–
20. By contrast, T-Mobile offered a construction requiring
that the resource allocator not only “ha[ve] knowledge of
the type of data application,” but that it “further take[]
into account, when allocating bandwidth, information
about applications at [OSI] application layer 7.” J.A.
4422. According to T-Mobile, the application-aware
resource allocator must allocate resources using infor-
mation obtained from the application layer 7.
The district court adopted T-Mobile’s construction of
“application-aware resource allocator.” J.A. 106–08.
According to the district court, when allocating band-
width, the application-aware resource allocator must take
into account information obtained from the application
layer 7. J.A. 107. It noted this construction was “sup-
ported by the prosecution history, during which the
patentee distinguished its invention from prior art based
on the fact that the invention is ‘aware of layer 7 applica-
tion information’ and, further, that the resource allocator
must ‘be able to take into account, when allocating band-
width, information at . . . layer 7.’” J.A. 107 n.7.
The parties also disputed the construction of the
means-plus-function claim language “allocating means for
allocating resources to said IP flow . . . so as to optimize
end user application IP QoS requirements of said software
application.” While IV argued the function was “allocat-
ing resources to said IP flow . . . so as to optimize end user
6 INTELLECTUAL VENTURES I LLC v. T-MOBILE USA, INC.
application IP QoS requirements of said software applica-
tion,” T-Mobile countered that the function was indefinite.
J.A. 4445–46. IV proposed as structure the “MAC down-
link subframe scheduler module 1566 or MAC uplink
subframe scheduler 1666,” and T-Mobile argued the
’248 patent discloses no structure. J.A. 4445–46.
The district court agreed with T-Mobile that the func-
tion for the “allocating means” was indefinite. J.A. 110–
12. Noting the ’248 patent described QoS as “subjective”
and “vary[ing] from user to user based on individual
preferences,” it determined the patent does not “provide
adequate guidance as to the meaning of ‘optimize,’” as
used in claim 20, and does not “rectify the indefiniteness
of the portions of the specification indicating that QoS is
subjective and varies by user.” J.A. 112. The district
court did not address the parties’ arguments regarding
the corresponding structure. Id.
Following claim construction, IV submitted infringe-
ment contentions alleging T-Mobile’s products include the
claimed application-aware resource allocator. T-Mobile
moved to strike the infringement contentions, and the
district court granted the motion, finding the infringe-
ment contentions “incorporate[d] only the first part of the
Court’s construction” and omitted “the latter half of the
Court’s construction—including the phrase ‘layer 7.’” J.A.
134. After denying IV’s motion for reconsideration, the
district court granted T-Mobile’s motion for summary
judgment of non-infringement, stating “IV’s opposition to
summary judgment depends entirely on a claim construc-
tion position the Court has rejected.” J.A. 69–76.
IV appeals the grant of T-Mobile’s motion for sum-
mary judgment, arguing the district court erred in the
construction of “application-aware resource allocator” and
indefiniteness determination for “allocating means” upon
which its grant of summary judgment was premised. We
have jurisdiction under 28 U.S.C. § 1295(a)(1).
INTELLECTUAL VENTURES I LLC v. T-MOBILE USA, INC. 7
DISCUSSION
Because it is based solely upon the intrinsic record,
we review the district court’s claim constructions de novo.
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831,
841–42 (2015). We review a determination of indefinite-
ness de novo, though we review any factual findings about
extrinsic evidence for clear error. BASF Corp. v. Johnson
Matthey Inc., 875 F.3d 1360, 1365 (Fed. Cir. 2017). We
review the district court’s grant of summary judgment
under the law of the regional circuit, here the Third
Circuit, which performs de novo review. Akzo Nobel
Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1338
(Fed. Cir. 2016).
I. “Application-Aware Resource Allocator”
IV argues the district court erred in construing “appli-
cation-aware resource allocator” in claim 1 and “applica-
tion-aware media access control (MAC) layer” in claim 20
as a resource allocator that “has knowledge of the type of
data application and further takes into account, when
allocating bandwidth, information about applications at
[OSI] application layer 7.” According to IV, application
awareness requires only that the resource allocator allo-
cate resources based on application type, which can be
discerned using information obtained from any of network
layer 3, transport layer 4, or application layer 7.
We agree. “The words of a claim are generally given
their ordinary and customary meaning as understood by a
person of ordinary skill in the art when read in the con-
text of the specification and prosecution history.” Thorner
v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365
(Fed. Cir. 2012). The plain language of the claims, the
specification, and the prosecution history all support IV’s
construction.
The plain language of claims 1 and 20 does not specify
how the resource allocator becomes “aware” of an applica-
8 INTELLECTUAL VENTURES I LLC v. T-MOBILE USA, INC.
tion. Claim 1, for example, recites only that the “resource
allocator allocates bandwidth resource to an [IP] flow
associated with a software application of a user based on
IP QoS requirements of said software application.” There
is no requirement in claim 1 that the “IP QoS require-
ments of said software application” be discerned using
information obtained from application layer 7. Similarly,
claim 20 provides that an “application-aware [MAC]
layer” includes an “identifying means for identifying an
application type of a software application associated with
an IP flow” and an “allocating means for allocating re-
sources to said IP flow, responsive to said identifying
means.” Claim 20 requires identification of an “applica-
tion type,” but does not specify that the application type
be identified using information obtained from application
layer 7.
The ’248 patent specification contemplates determin-
ing the “IP QoS requirements of said software applica-
tion” in claim 1 and the “application type” in claim 20
using information obtained from any of network layer 3,
transport layer 4, or application layer 7. It states, “[b]y
using the present invention, . . . scarce wireless band-
width can be conserved and dynamically allocated where
needed by the QoS mechanisms associated with each
application type.” ’248 patent at 22:8-12. While the
resource allocator operates at data link layer 2, the patent
teaches, “the nature and QoS requirements of each IP
stream are determined by other portions of the system”
and “communicated to” the resource allocator. Id. at
22:20–22. In some embodiments, the patent explains,
“application-level [i.e., application layer 7] information
about the nature of the application can be used by the
system to assign appropriate QoS mechanism parameters
to the IP stream,” while in others “information about the
IP streams for use in configuring the appropriate QoS
mechanism parameters can be extracted from packet
headers” at network layer 3 and transport layer 4, such as
INTELLECTUAL VENTURES I LLC v. T-MOBILE USA, INC. 9
network layer 3 source and destination IP addresses or
transport layer 4 packet source and destination port
numbers. Id. at 22:26–29; 53:18–33. These embodiments
are reflected in Figure 4, which illustrates the resource
allocator receiving information from each of the applica-
tion layer 7 (labeled 412), the transport layer 4 (la-
beled 410), and the network layer 3 (labeled 408), as
indicated by arrows 426, 428, and 430, respectively. Id. at
42:47–51.
Many of the claims depending from claim 1 also re-
flect these embodiments. Claim 2, for example, provides
that the “resource allocation is based upon input from at
least one of: a packet header,” that is, information from
network layer 3 or transport layer 4, “and a software
application communication,” that is, information from
application layer 7, “to said MAC layer.” Claim 10 recites
that the “resource allocator allocates switching resource to
said software application based on an application type,”
and claim 11 mirrors claim 2, providing that the “applica-
tion type is identified based on input from at least one of:
a packet header; and a software application communica-
tion to said MAC layer.” And claim 19 provides that the
“application type” can be recognized through “analysis of
at least one of: . . . information operated on at layer 3 of
the OSI model, information operated on at layer 4 of the
OSI model, . . . and information operated on at layer 7 of
the OSI model.” Any construction of claim 1 that required
the resource allocator to allocate resources using only
information obtained from application layer 7, and not
from network layer 3 or transport layer 4, would render
these dependent claims meaningless. Such a construction
is “disfavored.” Rambus Inc. v. Infineon Techs. AG, 318
F.3d 1081, 1093 (Fed. Cir. 2003).
We conclude, therefore, that the plain meaning of
“application-aware resource allocator,” read in context of
the specification, supports IV’s construction, namely, a
resource allocator that “allocates resources based on
10 INTELLECTUAL VENTURES I LLC v. T-MOBILE USA, INC.
application type,” which can be discerned using infor-
mation obtained from any of network layer 3, transport
layer 4, and application layer 7.
Nevertheless, T-Mobile urges us to adopt a construc-
tion that requires the “application-aware resource alloca-
tor” allocate resources using only information obtained
from application layer 7, arguing statements made in the
prosecution history disavowed the full scope of the claims.
Since “[i]t is the claims that define the metes and bounds
of the patentee’s invention,” “[t]he patentee is free to
choose a broad term and expect to obtain the full scope of
its plain and ordinary meaning unless the patentee ex-
plicitly . . . disavows its full scope.” Thorner, 669 F.3d at
1367 (citing Phillips v. AWH Corp., 415 F.3d 1303, 1313
(Fed. Cir. 2005) (en banc)). Disavowal is an “exacting”
standard under which it must be established that the
patentee “demonstrate[d] an intent to deviate from the
ordinary and accustomed meaning of a claim term”
through “expressions of manifest exclusion or restriction,
representing a clear disavowal of claim scope.” Epistar
Corp. v. Int’l Trade Comm’n, 566 F.3d 1321, 1334 (Fed.
Cir. 2009).
The statements in the prosecution history T-Mobile
cites do not meet this exacting standard. T-Mobile first
cites two statements made by the patentee of the
’248 patent in a July 2002 Amendment and Reply (“2002
Reply”):
As will be apparent to those skilled in the art,
“application aware” refers to the resource alloca-
tor’s knowledge of information from the Applica-
tion layer seven (7) of the [OSI] model of network
architectures.
J.A. 3515–16.
INTELLECTUAL VENTURES I LLC v. T-MOBILE USA, INC. 11
As would be apparent to those skilled in the art,
“application awareness” refers to knowledge above
the TCP or UDP layer.
J.A. 3520.
T-Mobile argues these statements demonstrate a re-
striction of “application awareness” to the embodiment in
which the resource allocator allocates resources using
information obtained from application layer 7. We disa-
gree. These statements say only that “application aware-
ness” means being aware of applications running at
application layer 7. A subsequent statement in the 2002
Reply confirms this reading: “Thus, Applicant’s invention
covers a MAC layer that is aware of an application asso-
ciated with an IP flow.” J.A. 3520 (emphasis added).
The remainder of the 2002 Reply confirms this under-
standing of the patentee’s statements. For example, the
patentee references Figure 15A of the ’248 patent, in
which network layer 3 and transport layer 4 packet
header information is used to allocate resources. As the
’248 patent explains, a “packet header identification
component 1502 identifies [an] IP flow . . . based on [a]
packet header,” and “analyzes the packet header” to
“determine[] . . . the type of source application.”
’248 patent at 63:11–13, 36–41. “Once the type [of] source
application has been determined by packet header infor-
mation,” it states, “the QoS requirements for the applica-
tion are determined” by the “packet characterization
component 1504” in Figure 15A “using the source applica-
tion information identified” by the packet header identifi-
cation component 1502. Id. at 63:55–59, 64:14–19. The
patentee’s reference to Figure 15A, depicting embodi-
ments in which the resource allocator becomes application
aware using information obtained from network layer 3
and transport layer 4 packet headers, is inconsistent with
T-Mobile’s urged disavowal of these embodiments.
12 INTELLECTUAL VENTURES I LLC v. T-MOBILE USA, INC.
Even more telling is the patentee’s addition, in the
2002 Reply, of claim 19, which expressly provides that the
“application type” can be recognized through “analysis of
at least one of: . . . information operated on at layer 3 of
the OSI model, information operated on at layer 4 of the
OSI model, . . . and information operated on at layer 7 of
the OSI model.” This shows that the patentee knew how
to restrict the resource allocator to using information
obtained from layer 7. If the patentee had intended to
similarly restrict the resource allocator in claim 1, it could
have done so using the language of claim 19, but did not.
See Unwired Planet, LLC v. Apple Inc., 829 F.3d 1353,
1359 (Fed. Cir. 2016). What’s more, the addition of a
dependent claim reciting that the resource allocator can
use information obtained not only from application layer 7
but also from network layer 3 and transport layer 4 belies
any disavowal of these latter embodiments in the inde-
pendent claim from which it depends.
We see in the 2002 Reply no “intent to deviate from”
the full scope of the claims. We conclude the statements
T-Mobile cites in the 2002 Reply are not “expressions of
manifest exclusion or restriction, representing a clear
disavowal of claim scope.” Epistar, 566 F.3d at 1334.
T-Mobile also points to a statement made by the pa-
tentee in an April 2003 Amendment and Reply (“2003
Reply”):
The application awareness refers to knowledge by
the system of the type of data application, such as,
e.g., a voice over IP (VoIP) type data application,
or a video type data application. The application
awareness feature further refers to the aspect of
the resource allocator that allows the resource al-
locator to be able to take into account, when allo-
cating bandwidth, information about applications
at [OSI] application layer 7.
INTELLECTUAL VENTURES I LLC v. T-MOBILE USA, INC. 13
J.A. 3499 (emphases removed). T-Mobile argues this
statement imposes two distinct requirements for applica-
tion awareness: first, that an application type be deter-
mined, and second, that the resource allocator allocate
resources using information obtained from application
layer 7. It concedes that application type can be discerned
using information obtained from network layer 3 or
transport layer 4, but maintains that application aware-
ness further requires allocating resources using infor-
mation obtained from application layer 7. We are not
persuaded.
First, we do not read this statement as imposing two
distinct requirements for application awareness.
“[I]nformation about applications at [OSI] application
layer 7” means just that: information about applications
that are running at application layer 7. We understand
the patentee to be stating that application awareness
involves determining a type of an application and allocat-
ing resources based on the application type. As the pa-
tentee goes on to state in the 2003 Reply, “bandwidth can
be dynamically allocated using the present invention . . .
by tailoring allocations to the application needs associated
with each application type.” J.A. 3500 (emphasis re-
moved). T-Mobile’s suggestion that resource allocation
must be done using something other than the determined
application type is at odds with the claims and specifica-
tion and leaves one wondering why the application type
was determined in the first place. “There is no ‘clear and
unmistakable’ disclaimer if a prosecution argument is
subject to more than one reasonable interpretation, one of
which is consistent with a proffered meaning of the dis-
puted term.” SanDisk Corp. v. Memorex Prods., Inc., 415
F.3d 1278, 1287 (Fed. Cir. 2005).
Second, other statements made in the 2003 Reply con-
firm that the patentee did not intend to limit the resource
allocator to using information obtained from application
layer 7. The patentee explains, for example, that network
14 INTELLECTUAL VENTURES I LLC v. T-MOBILE USA, INC.
layer 3 “source and destination IP addresses” in packet
headers are “helpful in providing application aware
preferential resource allocation.” J.A. 3500 (emphases
removed). In particular, the patentee adds, they “can be
analyzed to determine the type of a source application,”
and “bandwidth can be dynamically allocated to where
the bandwidth is needed by recognizing QoS requirements
mechanisms associated with each application type.” J.A.
3500–01 (emphases removed). We conclude the state-
ments T-Mobile cites are not “expressions of manifest
exclusion or restriction, representing a clear disavowal of
claim scope.” Epistar, 566 F.3d at 1334.
Having discerned no disavowal, we hold that the “ap-
plication-aware resource allocator” in claim 1 and “appli-
cation-aware media access control (MAC) layer” in
claim 20 are not restricted to allocating resources using
information obtained from application layer 7. We con-
strue this claim language to have its plain meaning,
which permits the resource allocator to allocate resources
based on application type, which can be discerned using
information from any of network layer 3, transport lay-
er 4, and application layer 7.
II. “Allocating means for allocating resources to
said IP flow . . . so as to optimize end user appli-
cation IP QoS requirements of said software ap-
plication”
IV argues the district court erred in determining the
claimed “allocating means for allocating resources to said
IP flow . . . so as to optimize end user application IP QoS
requirements of said software application” is indefinite.
According to IV, the specification provides sufficient
structure to render the “allocating means” definite, but
the district court erroneously failed to consider this struc-
ture after determining the function was indefinite. We do
not agree.
INTELLECTUAL VENTURES I LLC v. T-MOBILE USA, INC. 15
Under 35 U.S.C. § 112, a patent claim must “particu-
larly point[] out and distinctly claim[] the subject matter”
regarded as the invention. In particular, a claim, viewed
in light of the specification and prosecution history, must
“inform those skilled in the art about the scope of the
invention with reasonable certainty.” Nautilus, Inc. v.
Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014); see
also Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,
1371 (Fed. Cir. 2014) (“The claims, when read in light of
the specification and the prosecution history, must pro-
vide objective boundaries for those of skill in the art.”).
While a claim employing a “term[] of degree” may be
definite “where it provide[s] enough certainty to one of
skill in the art when read in the context of the invention,”
Interval Licensing, 766 F.3d at 1370, a term of degree that
is “purely subjective” and depends “on the unpredictable
vagaries of any one person’s opinion” is indefinite, Datam-
ize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350–
51 (Fed. Cir. 2005).
We conclude that the “QoS requirements” are entirely
subjective and user-defined. The ’248 patent analogizes
QoS to “a continuum, defined by what network perfor-
mance characteristic is most important to a particular
user” and characterizes it as “a relative term, finding
different meanings for different users.” ’248 patent at
12:51–52, 62–65. “Ultimately,” the ’248 patent states,
“the end-user experience is the final arbiter of QoS.” Id.
at 14:39–40.
By the ’248 patent’s own terms, “optimiz[ing] . . . QoS”
is a “term of degree” that, like the “aesthetically pleasing”
limitation in Datamize, is “purely subjective” and depends
“on the unpredictable vagaries of any one person’s opin-
ion.” 417 F.3d at 1350–51. As in Datamize, merely un-
derstanding that “optimiz[ing] . . . QoS” relates to the
end-user experience “fails to provide one of ordinary skill
in the art with any way to determine whether” QoS has
been “optimiz[ed].” We see no error in the district court’s
16 INTELLECTUAL VENTURES I LLC v. T-MOBILE USA, INC.
conclusion that this function is indefinite or that because
the function is indefinite, there was no need to evaluate
structure. We have similarly held a means-plus-function
limitation indefinite without looking to structure where a
term of degree in the function was sufficient to render the
claim indefinite. Interval Licensing, 766 F.3d at 1369 n.4.
CONCLUSION
We construe “application-aware resource allocator” in
claim 1 and “application-aware media access control
(MAC) layer” in claim 20 to have their plain meaning,
which permits the resource allocator to allocate resources
based on application type, which can be discerned using
information from any of network layer 3, transport lay-
er 4, and application layer 7. Because the district court’s
grant of summary judgment of non-infringement resulted
from a contrary construction, we vacate and remand. We
affirm the district court’s determination that the “allocat-
ing means” in claim 20 are indefinite.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED
COSTS
No costs.