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IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF DELAWARE


EXTRICOM, LTD, )
)
Plaintiff, )
)
v. ) C.A. No. 1O-cv-391 (GMS)
)
MERU NETWORKS, INC., )
)
Defendant. )
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ORDER CONSTRUSING THE TERMS OF U.S. PATENT NO. 7,697,549
After having considered the submissions of the parties and hearing oral argument on the
matter, IT IS HEREBY ORDERED, ADJUDGED, and DECREED that, as used in the asserted
claims of U.S. Patent No. 7,697,549 (the "'549 Patent"):
1. The term "access points" is construed to have its plain and ordinary meaning.
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2. The term "[a mobile station] a common basic service set identification (BSSID) for all the
access points" is construed to have its plain and ordinary meaning, except that "all the access
points" is construed to mean "a plurality of access points.,,2
I The court rejects the construction Meru proposed in its Opening Claim Construction Brief. (D.l. 38 at 9
10.) "Words of a claim 'are generally given their ordinary and customary meaning.'" See Phillips v. AWH Corp.,
415 F.3d 1303,1313-14 (Fed. Cir. 2005) (citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir.
1996)). This meaning is the definition "the term would have to a person of ordinary skill in the art in question" at
the patent application's filing date. Id. at 1313 (citing Innova/Pure Water, Inc. v. Safari Water Filtration Systems,
Inc., 381 F.3d 1111, 1116 (Fed. Cir. 2004)). During the Markman hearing, Meru revised its proposed construction,
requesting that the court construe "access points" to mean either: (1) "devices that enable a mobile station to
communicate over the air with a network in a service region," a construction that removes the "within a service
area" language Meru initially proposed (D.!. 38 at 9-10); or (2) "any entity that has station functionality and
provides access to the distribution services, via the wireless medium (WM) for associated stations." See Transcript
of Hearing, dated October 25,2011 ("Tr.") at 52:4-15. The latter is the definition Extricom provided in its Opening
Claim Construction Brief as the meaning of the term as understood by a person of ordinary skill in the art in 2002
based on the 802.11-1999 protocol. (D.l. 40 at 5, n.6.) In urging the court to construe "access points" according to
this definition, as one of two possible constructions, Meru conceded its earlier argument that this term is unique and
needs to be construed. (D.l. 38 at 9.) By abandoning this argument and n::vising its proposed construction to
Extricom's description, Meru ultimately agreed that the' 549 Patent's use of this term reflects its conventional
meaning and, therefore, would have been adequately understood by one of ordinary skill in the art.
3. The term "uplink packet" is construed to have its plain and ordinary meaning.
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4. The term "substantially in accordance with IEEE Standard 802.11" is construed to have its
plain and ordinary meaning.
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5. The term "uplink data packet" is construed to have its plain and ordinary meaning.
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6. The term "convey message responsively to the uplink packet" is construed to have its plain
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and or mary meanmg.
7. The term "manager node" is construed to mean "one or more devices that coordinate and
control operation of the access points over the LAN and is not an access point.,,7
2 The court rejects Meru's argument that defining "all access points" as "a plurality of access points" would
"inject confusion" into the meaning of this term, which both parties agree should otherwise be construed to have its
plain and ordinary meaning. (Tr. 46: 19-22.) Specifically, "all access points" refers for antecedence to "a plurality
of access points," which appears in Claim I four lines above the instant terrr and, as such, qualifies the term to
define a plurality of access points rather than all access points on a network. See U.S. Patent No. 7,697,549 ("'549
Patent"), Col. 16: 11-25. The' 549 Patent's specification likewise suppor:s this meaning, as the preferred
embodiments describe the access points acting in groups that "are substantially independent" and may be "regarded
as separate systems," not a single unit. See id. at Col. 8: 10-21.
3 During the Markman hearing, the parties agreed on this construction of the term. See Tr. at 26:35-27:1-6.
4 The court disagrees with Meru's argument that this term is indefinite and is not amenable to construction
because it does not, as required by 35 U.S.c. 112, ~ 2, "particularly point[] out and distinctly claim[] the subject
matter which the patentee regards as his invention." (0.1.38 at 14.) The Federal Circuit recently concluded that the
Institute of Electrical and Electronics Engineers ("IEEE") 802.11 Standard includes both mandatory and optional
provisions, such that two products implementing the Standard will not necessarily infringe each other. See Fujitsu
Ltd. v. Netgear, [nc., 620 F.3d 1321, 1327-28 (Fed. Cir. 2010) (concluding that where a patent incorporates a
standard such as 802.11, which includes both mandatory and optional provision:;, courts should compare the "claims
... to the accused product to determine infringement"). Moreover, the Federal Circuit has recognized that some
patents will not incorporate all aspects of an industry standard and that it is only in cases where "a patent covers
every possible implementation of a standard will it be enough to prove infringement by showing standard
compliance." See id. at 1328. Moreover, the 802.11 Standard itself also establishes which elements of the Standard
must be incorporated for an invention to be considered "in compliance." See IEEE 802.11 -2007 (describing the
functions and services of an 802.11 Standard compliant device and providing examples of features that do not have
to be incorporated or fully incorporated to meet Standard compliance). Finally, Extricom's contention that one of
ordinary skill in the art would understand the meaning of this term is likewisempported by the fact that over forty
issued patents and pending patent applications use this or similar language in describing 802.11 Standard
compliance. (0.1.40 at 19.)
5 During the Markman hearing, the parties agreed on this constructio[ of the term in light of their agreed
construction of "uplink packet." See Tr. at 27:7-13; see also supra footnote 3.
6 During the Markman hearing, the parties agreed on this constructior of the term in light of their agreed
construction of "uplink packet." See Tr. at 27:7-13; see also supra footnote 3.
7 The court rejects Extricom's proposed construction of this term, which both parties agree is not amenable
to plain and ordinary meaning. (0.1.38 at 16-18; 0.1. 40 at 7-10.) First, Extricom's proposed construction defining
the manager node's functionality as coordinating and controlling "various operations" of access points departs from
the patent specification and injects ambiguity into the term. See Phillips, 415 F.3d at 1315 (Fed. Cir. 2005) ("[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.'" (quoting Vitronics Corp., 90 F.3d at 1582. Specifically, the
8. The term "so as to select one of the access points to respond to the uplink packet, and to send
an instruction via the switch to the selected one of the access points to transmit to the mobile
station a response to the uplink packet within the time limit specified by the WLAN
protocol" is construed to have its plain and ordinary meaning.
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9. The term "configured to fragment the uplink data packet among the succession of the data
frames" is construed to have its plain and ordinary meaning.
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specification provides that "[a]n access point manager node on the LAN coordinates and controls the operations of
the access points," and does not include the "various operations" language. See' 549 Patent, Col. 2:51-53.
Second, the court rejects Extricom's exclusion of the words "over the LAN" for similar reason. The '549
Patent's specification states that the manager node coordinates and controls access point operation "on the LAN."
See id. at Col. 2:51-53. Though Extricom argues that the specification describes how customized, operational access
points can transmit managerial messages such that managerial functions are not precluded from operating over the
WLAN, the court is not persuaded by its proposed construction. See id. at Col. 7:64-8:3, 9:4-16. Rather, the
specification also states that "[t]he access points communicate with the manager node via a switch in the LAN," and
Claims 1 and 27 describe that messages to the manager node are conveyed "over the LAN to the switch" and "over a
wired LAN linking the access points" to it. See id. at Col. 2:51-54; 16: 12-25; 18:56-59. Considering the
specification and claims in combination, the court concludes that the access points' managerial functionality is
distinct from the "manager node." Consequently, because the Patentee acted m, "his own lexicographer" in coining
the term "manager node," the definition and description included in the specification and claim terms control its
meaning. See Honeywell Intern v. Universal Avionics Systems, 493 F.3d 1358, 1361-62 (Fed. Cir. 2007) ("When a
patentee defines a claim term, the patentee's definition governs.").
Finally, the court agrees with Meru that inclusion of the words "and is not an access point" is necessary to
distinguish "manager node" from "access points." See, e.g., Helmsderfer v. Bobtick Washroom Equipment, Inc., 527
F.3d 1379, 1382 (Fed. Cir. 2008) (concluding that different claim terms are preslmed to have different meanings).
8 The court disagrees with Meru's contention that this term is indefinite, as well as with its proposed
construction. Meru asserts that the "within the time limit specified by the WLAN protocol" language is indefinite
because it "place[s] no discernable bounds on the 'time limit' required to practice the invention, which is in turn
based on some unidentified protocol that may contain any number of different 'time limits. '" (D.l. 38 at 18.) To
this end, Meru argued during Markman that the court, if it decides that the term is not indefinite, should construe it
to mean that the invention must perform its function within a particular timeframe. (Tr. 43:24-25; 44:1-16; 50:5
10.) Specifically, Meru urged the court to require performance of the acknowledgement within ten to sixteen
microseconds, the timeframe "set forth in 802.11A, B, and G" and referenced in the specification. (Id. at 44:1-7;
50: 14-22.) As Extricom correctly notes, however, this construction injects a time limitation from the specification
into the claim terms despite exemplary teachings in the intrinsic record stating that the invention is not limited to one
particular standard or protocol. (D.l. 40 at 14-18 (citing '549 Patent, Col. 11:15-27).) Rather, the '549 Patent
specifically teaches an initial cycle and "multiple cycle iterations" involving retry requests. '549 Patent, Col. 11: 15
27. In view of the foregoing, the court agrees with Extricom's proposed construction. See Phillips, 415 F.3d at
1315 ("[T]he specification is highly relevant to the claim construction Usually it is dispositive; it is the
single best guide to the meaning of a disputed term." (citing Vitronics Corp., 90 F.3d at 1582)); see also Comarck
Communications, Inc. v. Harris Corp., 156 F.3d 1182, 1186 (Fed. Cir. 1998) ("while ... claims are to be interpreted
in light of the specification and with view to ascertaining the invention, it does not follow that limitations from the
specification may be read into the claims" (internal citation omitted)). At trial, the defendants will be able to present
their indefiniteness arguments as to this and other disputed claim terms.
9 The construction of this term, as well as of the term "operative to fragment the uplink data packet" ("Term
1 0"), centers on the meaning of the "to fragment the uplink data packet" language. The court rejects Meru's
proposed construction, which rests on the notion that Extricom, through its patent specification and prosecution
10. The term "operative to fragment the uplink data packet" is construed to have its plain and
ordinary meaning. 10
Dated: December S,2011
history, disavowed "standard fragmentation" to distinguish the '549 Patent fr)m the prior art. (OJ. 38 at 19-20
(citing' 549 Patent, Col. 13 :58-62; Prosecution History at JA-003143).) Specifically, Meru notes that during the
, 549 Patent prosecution, Extricom distinguished the Bajic reference by staling that "Bajic relates to standard
fragmentation and defragmentation functions, but says nothing about the sizes of the fragments." See Prosecution
History at JA-003143. Meru further asserts that this disavowal is supported by Extricom's cite to the specification
that describes using a "novel fragmentation and encapsulation protocol." '549 Patent, Col. 7: 14-19. Meru argues
that Federal Circuit precedent requiring courts to construe patent claims in lig.ht of the "specification's consistent
emphasis on [a] fundamental feature of the invention," directs that this term be construed to distinguish its meaning
from "standard fragmentation." (0.1.38 at 20 (citing Praxair, Inc. v. Atmi. 1'lC., 543 F.3d 1306, 1324 (Fed. Cir.
2008).) The court disagrees. Specifically, though Extricom references "novel fragmentation" in the '549 Patent's
specification, this reference cannot be viewed in isolation. Rather, throughout the specification Extricom details
varied, alternative fragmentation methods, using such qualifying terms as "typi;;ally," "in some embodiments," and
"additionally or alternatively," See '549 Patent, Col. 3:66-4:10; 7:11-14; 14:6-9. Consequently, the court concludes
that this term, when read in conjunction with the specification and other claims, is not limited to "small frame
length, as distinguished from standard fragmentation functions." See Phillips 415 F.3d at 1315 (Fed. Cir. 2005)
(concluding that claim construction should be consistent with a patent's specification and noting that "the inventor's
intention, as expressed in the specification, is dispositive" (citing Vitronics Corp" 90 F.3d at 1582; id. at 1315-16
(concluding that, although the prosecution history is a part of the intrinsic record, it is generally less reliable for
purposes of claim construction than the specification and claims because the prosecution history reflects a
"negotiation history" rather than the result of that negotiation); Comarck Commc'ns, 156 F.3d at 1186 ("while ...
claims are to be interpreted in light of the specification and with a view to ascertaining the invention, it does not
follow that limitations from the specification may be read into the claims" (citations omitted).
10 See supra footnote 9.